Master the Art of Patent Searching

Patent searches are a must before you can transform your idea into an invention!
We take you through the patent search process

Patent searching is a critically important activity that all inventors and innovators must undertake before filing for a patent. A patent is a type of Intellectual Property Right that allows its owners the legal right to monopolise their inventions. Not only does it allow them to gain commercial benefits, but inventors can also exclude other parties from using, making, or selling their invention (for a limited period), thus gaining a financial advantage. The patent is presented as a certificate that also doubles as a legally binding document crediting inventors for their invention.

Patent searching is the very first step in the process of acquiring a patent. As someone applying for a patent, you must spend enough time searching for existing patents before you file your application. Doing so allows you to familiarise yourself with prior, similar arts for which patents have already been granted. As such, it will enable you to concentrate on making your invention unique. Conducting a patent search helps you save both time and money. What’s more, you can conduct your search on your own or hire a professional patent searcher. Here’s a master class on the art of patent searching.

Patent Search – Definition and Explanation

A patent search fundamentally deals with the research and data mining processes for a particular patent. Contrary to popular belief, patent searchers are not just involved with searching for patents. They also have to scout for legal and non-patent literature which could potentially be linked to specific patent-oriented projects.

For companies across the globe, patent searching is a critical step because it assures companies that their innovations are indeed unique. The uniqueness of the product plays a crucial role in helping a company succeed and grow. To maintain their edge, companies create a road map, which serves as a strategic tool in the patent searching process.  The patent roadmap is a blue print that helps the applicant device a strategy in the patent filing process. It provides companies with informational and theoretical support, allows them to learn about the existing, patent competition situation, and create their patent layout plans accordingly. The map provides the patent searchers with strategic inputs, thus making the act of patent searching one of the many strategies.

How to search for a patent?

Let’s understand the process of searching for patents with the help of an example. Say an electronics company wishes to expand its business by introducing wireless internet modems. These are the steps they will have to follow during the patent search process.

1. Searching patented and non-patented information
   The first thing a company needs to do is assemble an Intellectual Property team. This team starts the patent search process by analysing patented and non-patented data in the field of wireless internet modems. The IP team is typically required to search for data published in patent journals, magazines, and other forms of literature in the last seven years.
2. Creating a report, handing over the findings, and considering alternative business measures
   Based on their findings, the IP team must create a report for the R&D team to give them a direction for their work. The IP team may also share the same report – with their business strategists and provide them with the relevant information about other active patent filers in the wireless internet modems space. Armed with their research, the team can analyse their competitors or consider aspects of business such as licensing deals, mergers, and acquisitions.
3. Conducting an internal exercise
   The R&D team now conducts an internal exercise, where it lists down a set of innovations which are both relevant and advantageous to the company’s strategy. After the list has been shared with the Intellectual Property team, they then conduct patent searches to identify whether the proposed inventions are novel and unique enough to patent.
4. Verifying the invention
   The next step in the patent search process involves the verification of the patent by the IP team. The team rechecks for infringement upon any other existing patents or those that are in the process of filing. By verifying their creation, the IP team ensures that the company doesn’t get entangled in legal matters and that there will be no barriers when they file for their patent.
5. Drafting the patent application
   The company now begins the process of drafting the patent application. At this time, it identifies other patents and discloses already existing technologies. Mentioning existing designs helps the patent reviewer understand how the company’s product and features are unique. Furthermore, in its patent draft, the company also has the right to oppose or invalidate a competitor’s patent based on its research. However, the company must provide relevant reference data to invalidate that patent. At this point, patent lawyers are hired to help the company file their claim.
6. Reporting on new updates
   While the patent is in the process of being drafted, the Intellectual Property team frequently reports to the R&D and the strategy teams about ongoing patents published in patent journals. This allows the patent search team to ensure they don’t miss any data about their innovation in their patent application.
7. Continuing the process of patent searching
   As the patent lifecycle progresses in stages, the company can continue to carry out patent searches to evaluate or audit their patent portfolio, thus ensuring their innovation is indeed unique.

Key takeaway from the Patent Search Process

Clearly, the patent search process provides calculated inputs on several fronts. It also guides the organisation’s strategy to protect its inventions. While this is a generic patent search process, it should be noted that the process can differ based on varying situations and innovations. This process applies not only to companies but also to individual inventors, government agencies, academic institutions, and other entities.

Why should you search for patents before filing?

There are several reasons to search for a patent before filing a patent application. For instance, patent searching helps you uncover evidence about recent inventions. It also enables you to study and learn how particular technologies develop or to find patents filed by eminent academicians. The process helps you discover published patent documents, allowing you to ensure your designs are unique. File for a patent only after adequate research, otherwise, it is likely that your application may be rejected or that other inventors may file invalidity claims.  That would ruin all the effort you put into drafting your patent. Furthermore, the filing process is both time-consuming and expensive – if you don’t complete the patent searching process, you could lose a significant amount of money. While conducting a patent search may seem to be an uphill task, it proves fruitful when your patent is granted without any hindrances.

Different types of patent searches

Essentially, there are five types of patent searches that depend on the questions you are being asked during the patent evaluation process. They are:

1. The state-of-the-art patent search
   A patent search regarded as the most basic, the state-of-the-art search provides a survey of all relevant documents published in specific fields by specific applicants and inventors. It includes searches from conventional works of literature, including scientific articles, articles in the press, theses and dissertations, and “grey literature” – instruction manuals and promotional literature, for instance. This type of patent search can result in the unearthing of several documents as per the technical field’s extent. This search essentially intends to establish the information and knowledge already available in the public domain via oral or written means.
2. The prior art/novelty/ patentability search
   The second type of patent search, this search is generally carried out in the industry by patent offices as a part of their search examination work. The process starts after a patent application is filed, and before it is examined. With this search, one can ascertain whether or not an invention is a novel, and if it can be excluded from being patented.
3. The freedom to operate patent search
   Also known as the freedom to act search, this type of patent search is the most complicated, especially since patents are time-limited and territorial. The object of this search is to discover where patent protection does not exist geographically and to identify when the existing patent protection will cease to exist and when the patent will not be in force any more. While the objective appears straightforward in principle, as a patent searching practice, it can be quite time-consuming, and even expensive. The situation gets more complicated if the implementation of a specific innovative product depends on another product being patented or already patented by another inventor. In such a case, the two (or more) inventors may have to consider options like mergers, acquisitions or licensing agreements based on the patents owned by them individually. The results from this search typically include the closest prior arts – publications that are already available in the public domain.
4. The opposition patent search
   If certain third party individuals or companies believe that a patent applicant should not be granted a patent, they can file an opposition patent search. However, the applicability and timings of the opposition patent search depends on the jurisdiction in which the patent is filed. One can file an opposition anytime during the patent filing process, including the time after which the patent is already granted but is yet to come into effect. The idea behind the opposition patent search is to ensure the patent examiner considers all legitimate arguments as to why a patent should not be granted. It allows the patent examiner to find prior works that may have been overlooked, thus leading to the opposition.
5. The (in)validity patent search
   The final type of patent search is the (in)validity search. This search is typically deemed similar to an opposition search. However, it is conducted at a later point in the lifetime of the patent and not generally during the patent application, examination, and granting process. The objective of this type of search is to uncover prior art that has the potential to render a granted patent invalid. It essentially aims to check if a patent that is currently in-force can indeed withstand an invalidity search.

Final note: A patent search involves some aspects which are akin to searching for different types of technical literature, including articles published in popular magazines, academic journals and professional papers. That said, some aspects of searching for patents are vastly different from searching for conventional literature – which is why patent searchers must apply dedicated tactics and strategies during their search. The main points of difference between searching for conventional patents and publications typically arise from the very nature of the patent document itself and the distinctive way in which the databases of the patent are constructed. If you wish to file a patent, you should familiarise yourself with the various patent searching techniques so that you are confident in the searching and subsequent filing process.