How to Perform a Patent Search

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:

  1. Brainstorm a list of terms or keywords that describe or identify the invention.
  2. Using the terms or keywords, identify one or more patent classifications within which the invention may fall.
  3. Review the description of the classification you identified to ensure it is relevant to the invention.
  4. 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.
  5. Review the narrowed list of patents in detail, by focusing on the additional drawings and specification, to further narrow the list of patents.
  6. 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.
  7. 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.

Conducting a Patent Search

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It is important to be thorough and detailed when conducting a patentability search.  Although helpful in some cases, a simple Internet search, alone, is often not sufficient in the patentability search phase.  For example, in many cases, an invention may be the subject of a published patent application or issued patent, but may not make it to the market, and may therefore not appear in a simple Internet search.  As briefly identified above, the USPTO recommends the following 7-step strategy when conducting a patentability search:

  1. Brainstorm a list of terms that describe the invention. Consider the purpose and the physical composition of the invention, as well as the problems the invention seeks to solve.  Provide a comprehensive list of keywords and synonyms.
  2. Determine the Patent Classification for your invention. Patents and patent applications are organized or grouped using a patent classification system.  In 2013, the USPTO switched from using the United States Patent Classification (USPC) system to the Cooperative Patent Classification (CPC) system that has been adopted by many countries around the world.  Using the list of terms identified in Step 1, a classification search can be conducted on the USPTO website, for example, in order to identify the most relevant CPC group.
  3. Review the Patent Classification definition to ensure that the classification(s) chosen are the most relevant to the invention.
  4. Retrieve patent documents for patents issued under your invention’s Patent Classification. These can be found in the PatFT (Patents-Full Text and Image) database on the USPTO website, as well as other databases.  Using the text of the abstracts and representative drawings shown on the front pages of each patent publication, narrow down the list of patents to the ones that are most relevant.
  5. Do an in-depth review of the narrowed down patent publications from Step 4. Consider the references cited in each patent in order to potentially lead to other relevant patents.
  6. Now retrieve and review published patent applications in a similar manner, using the AppFT (Applications Full-Text and Image) database.
  7. Broaden your search in the AppFT and PatFT databases to include keywords relevant to your invention. Then consider broadening the search even further to include non-U.S. patents.

Once you’ve conducted a thorough patentability search, begin the process to submit your patent application to the USPTO as soon as possible.  Remember the United States has a first-to-file patent system, meaning that the application filing date could control patent rights.  It is thus important to move quickly and to file the patent application as soon as possible.

Gerben IP offers a wide range of intellectual property services, including patent searches.

The Benefits of Working with an Experienced Intellectual Property Attorney

As you can see, conducting a patentability search is oftentimes a tedious and time-consuming process.  For instance, this process often involves determining the classification of the invention, searching various databases for existing patents and published patent applications, and reviewing the patent documents in detail to identify which, if any, are most relevant to the invention.

While you can certainly perform a patent search on your own, the DIY approach is strongly discouraged.  Many intellectual property attorneys, and in particular, patent attorneys, have extensive experience conducting patent searches for all types of inventions.  An experienced patent attorney can determine which Patent Classification(s) is/are most relevant to the invention, and can identify a number of terms to search in the databases in an effort to find patents and patent applications that closely match the invention.  This way, you can focus on fine-tuning your invention, not spending hours reading patent publications.  Your patent attorney will also help you to draft your patent application based on the results of the patentability search and submit your documentation to the USPTO, which will help the overall patent application process to run as smoothly as possible.  You are strongly encouraged to work with an experienced patent attorney to ensure your patentability search is extensive and thorough.  Contact an intellectual property attorney today to begin the patent application now.

To learn how to file a patent application for a new product or invention, read our step-by-step guide.

Benjamin Hanrahan, Esq.

Benjamin Hanrahan, Esq. is a Registered Patent attorney, Board Certified in Intellectual Property Law by the Florida Bar, and recognized by Super Lawyers.

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