Patent Searching (Simplified)

Michael Cooper explains how to conduct a patent search. The United States Patent and Trademark Office has two useful features. The first feature is a series of links in each patent record providing the patents the Examiner found when conducting his search. The second feature is a “referenced by” button giving a list of patents that were subsequently issued that are related to each patent record.

I’m just going to give you a brief bit of information about patent searching. In order for something to be patentable, it has to be the right kind of subject matter, which is an inherent quality and something we can determine just by evaluating the invention. It also has to be both new and unobvious. “New” means that no one has done exactly the same thing before, which practically means that there isn’t a single document that fully describes the significant aspects of the invention. It also has to be, “unobvious”, and what that means is that there isn’t some collection of documents that, taken together, in light of the common general knowledge in the field, would make the idea obvious in light of a patent examiner. Anyone can do their own patent search and they can determine, or fairly readily make a determination, whether something’s new in light of what they’ve found. If you find a single document that fully describes your idea, you know where you stand – you’re not going to be able to patent it. But when you get into the question of obviousness, that’s more difficult, and that’s where you typically need professional advice. What I recommend to almost anyone who contacts me about, or is interested in patenting something, and has never been down the patenting road before, is that they do some of their own patent searching, and I strongly urge people to search first at the U.S. Patent and Trademark Office. There are two reasons for that. It’s one of the largest patent office and is still the single largest English-language patent jurisdiction in the world. More applications get filed there than anywhere else. In addition to being searchable using key words, it’s searchable using the patent classification system, which is a very detailed system of categorizing patents based on their technical subject matter. The details on how to use the patent classification system are set out on the U.S. Patent and Trademark Office’s website. So, if you go to that website and then enter “Patent Searching” in the search facility for the whole website, that will take you to a few pages that provide information on how to do patent searching. This includes an online video tutorial and information on the classification system, which I strongly recommend that you use. To illustrate the difference between doing a conventional key word search (the sort of thing you would do on Google) and using the classification system, if the application or patent in the U.S. is based on an original German application, it may be a poor translation, and you may be using key words that are common among English speakers but would not be used by somebody making a translation from the German. So that’s one reason why it’s very useful to use the classification system. If the results you get are that you are clearly dead in the water – you’ve found a single patent document that fully describes your idea, then you know where you stand – you don’t need to talk to someone like me. But if your results are inconclusive, and what you found are patents that describe different ways to get a similar solution, or patent documents that have part of your idea but not all of it, then you are into the question of whether your idea is “obvious” or not. The next step is to meet with a patent agent/patent lawyer. Bring to that first meeting a full description or a full summary of the search you did, meaning all the key words you may have used, plus a list of all the classes and sub-classes that you looked at, plus at least the cover page of any patent documents that may be relevant to that question of obviousness. If you bring those things to the first meeting with the patent agent, that meeting can be far more productive than it would be otherwise. So that’s a brief summary of how to do your own patent searching.