Patent Search Process
Research Credited to Olga Savka
- 1. The first step is to define the invention, what it is, how it could be similar or different to other current devices. Interaction between attorney and client is by phone, email, video conference or other convenient means. Typically the discussion centers around characterizing the invention and the development process. The inventor should have a clear understanding of their invention, and should be able to summarize the nature and originality of the invention clearly and fairly quickly.
2. A general search is done using general keywords. Think of the common terms that could uniquely describe your invention. The identified keywords are then employed by an attorney, such as ours, in appropriate search sites and programs. Synonyms and alternatives are often generated by the attorney when searching prior inventions or patents.
3. First a Minimal Search is conducted. Patents and published patent applications are searched. The main purpose of this search is to determine if an exact invention has ever been patented before.
4. A more comprehensive search would include non-patent literature, foreign patents and applications. This search would be done in order to be confident if the same device has been developed or if the present invention is an obvious variation based on prior art references. Non-patent literature could consist of trade magazines, websites, doctorial thesis articles or other prior art. Foreign prior art that could translate against your invention could also be a barrier from attaining a patent.
5. A Comprehensive Analysis of the prior art and feedback is then given to the client in a Patent Landscape Report or Patentability Report. This report is given with information regarding our understanding of your invention which formed the basis of the search, history of similar inventions and the current activities in the area. It will describe the history of the field of invention, as well as the present state in the field and potentially form the basis for future development of new technology by the client. A comprehensive analysis of the prior art can provide a strategy for future technology development, tracking competitors, increase in or focus of marketing and finding opportunities for licensing.
Types of Searches:
- Patentability search is one of the most widespread patent searches. This search determines whether an invention is patentable, useful, novel and if it’s unobvious. Usually patentability searches are done prior to submitting patent applications. It is useful to conduct a search before even filing an application since it can save time and money by reducing the possibility of a rejected application.
The main purpose of a validity search is to explore data and documents that could invalidate the invention of an existing patent. A search is conducted to verify if the claims of a particular issued patent are valid or invalid when compared to prior art available on the date of filing.
Usually focuses majorly on the unique details of the invention or the qualities that it has that are most likely patentable.
Infringement Search/Non-infringement Search
This type of search that focuses on looking for un-expired patents that may prevent you from being able to make, use or sell a product that you are bringing to market even though you may not patent your particular product.
This is a search that includes un-expired patents just like an infringement search, but also contains expired patents. This search maybe used in similar circumstances to the non-infringement search.
State-of-the-art (Prior-art) Search
A state-of the-art search is a search that is designed to give a general summary of prior technology. This search is often used by educational institutions to focus development and research in a particular field.
Accelerated Examination Search
Focuses on a search strategy and history to provide the necessary information required by the USPTO when requesting accelerated examination. In this program the USPTO guarantees a decision within 12 month of applications filing.
Custom Patent Search
A patent search could be customized due to special requirements of the client.
Similar to the state of the art search, the area of technology and the history of the industry is looked over of both expired and un-expired patents are incorporated as references.
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About Sean Kelleher (27 posts)
I am the founding member of Kelleher Patent Law. During and after engineering school, I had several contract engineering positions, which included product development, manufacturing process improvements, failure analysis. This experience has helped me better understand the development hurdles a client will see while developing, testing and manufacturing their product. As a strategic and tactical thinker, I am able to better understand the variations that clients’ products may undergo which has allowed me to produce better patent applications. I have successfully prosecuted a variety of patent applications and trademark registrations.