A patent search is often recommended in an effort to find potential prior art (e.g., any patents or patent applications) that may impact the patentability of your invention. In many cases, the search process is rather detailed and time-consuming, and thus, working with an experienced patent attorney is encouraged. In general, the United States Patent & Trademark Office, or USPTO, recommends the following 7-step strategy that can be followed when performing a patentability search:
- Brainstorm a list of terms or keywords that describe or identify the invention.
- Using the terms or keywords, identify one or more patent classifications within which the invention may fall.
- Review the description of the classification you identified to ensure it is relevant to the invention.
- Retrieve a list of all patents that are within the identified classification, and using the abstract and representative drawings, initially narrow down the results to a more relevant list of patents.
- Review the narrowed list of patents in detail, by focusing on the additional drawings and specification, to further narrow the list of patents.
- Retrieve a list of published patent applications that are within the classification identified in Step 3. Repeat Steps 4 and 5 to narrow the list of published patent applications that are most relevant to the invention.
- Expand your search to include non-U.S. patents.
Why Perform a Patent Search?
The USPTO will only grant a patent if the claimed invention is new and non-obvious. Because of this, it is often important to conduct a patentability search prior to preparing and filing a patent application. While the patentability search may not fully guarantee that the invention does not exist, the results are often reliable and can provide a level of confidence to move forward with the patent application process.
Specifically, the information you learn from the results of a patentability search can, in many cases, be valuable to the eventual success of the subsequently filed patent application. As just an example, a patentability search may reveal that some aspects of the invention are known, while other aspects or details of the invention may appear to be novel. In that case, the patent attorney can use this information to draft the patent application in a manner that focuses on the aspects of the invention that appear to be novel.