We get asked about how to search patents, more from people that know a little bit, but want more insight into how to search a better. In this post, we’ll give you the five steps we use to perform an initial review of an idea in the patent arena.
While not as comprehensive as Patent It Yourself, techies interested in some 411, come on in…
I’m going to assume that you, dear reader, understand what the different sections of a patent are (Title, Abstract, Claims, etc.) and where to perform searches. If you’re not that familiar with basic patent information, the USPTO has a definitions of a patent’s sections here. Also, while the Quick Search function is an easy way to jump in, I’d advise to learn how to use Advanced Search queries mainly because as you get better, you’ll be leveraging your early skills into more advanced techniques and it is easier to save your search string to use again.
[FYI - A search in the issued patent area should also be repeated in the published applications to get a sense of other possibly relevant prior art.]
Now, for the five steps…
First, define your idea/product concept to get to the ‘right’ search results. Take the idea or product you want to research and write down what you think are the top 3-5 relevant words to describe it in technical terms (e.g. laser, pointer, presentation, pen). If you’re asking how you find the right words, the best answer: “recursive loops of scanning”. As the folks in the competitive intel business say: “follow the 15 minute – 15 hour rule” (or something like that). Specifically, try some search terms, look at results, refine search terms, look at results, rinse, repeat, until the results are looking close to your idea. This high level screen of an idea in the patent arena is just like doing the first step of a Google search.
As a note during this step, don’t try to do more than discover how big or small your search results area is and clarifying the right set of keywords to use. An ideal search results set for the next step is roughly 50-500 patents/applications. If this step takes more than 15-30 minutes, you’re either learning too much on specific topics or didn’t define your search project narrow enough. Getting the keyterms right is your goal and should allow you to know how much more work is ahead.
Expert’s secret: Of all the sections of the patent, searching keywords in the Abstract yields excellent results with less noise. Avoid searching “all fields” which will over deliver noisy results and “title” which has almost no meaning to the content of the patent.
Second, dig into the right search results and learn. FYI, this is about 10 hours of the “15 hour step”. Reviewing patents and applications are best done in two phases:
a. Scan patents for those close to the pin. Specifically, read enough about each patent to understand what the idea is. If its good, then save it in a “go deep” list, if not, move on. This step is going to take about a minute a patent, or ~1 to 8 hours, with a typical yield of 5-20 patents of interest.
b. “Go deep” time on the list of patents you have noted. Now that you have a list, print the patents, read them, and take notes. Plan on spending about 30 minutes per patent of interest. Pay attention to your idea’s differences and similarities. Finish by noting the 3-8 words on the cover of the patent that defines that patent’s invention to you (meta data that makes for great future reference).
Expert’s secret: In the old days, PTO examiners would review classes of patents by flipping through boxes of hard copies, pulling the whole patent for a read if it was relevant. Newer systems at the PTO office allow searchers to do a similar process on the PTO’s in-house electronic system. We like the simplicity and efficiency of patent front pages and use them on our site for that reason.
Third, review the referenced by/cited patents the PTO noted. Now that you’ve narrowed to the key ~3-10 patents, you can read each patent’s “invention stream” to see the PTO examiner’s opinion of related prior and subsequent art. Most patents have 5-20 patent references, so expect about 30 minutes per key patent to scan these lists. Add any related patents to your key patent list as needed.
Expert’s secret: An advanced additional step is to review the class/sub class groups of the patents you’ve noted and re-run a broader search in just those areas (using Advanced Search).
Fourth, check to see if the identified key patents are in force. The PTO has a system, PAIR, that you can use to use to verify whether a patent is active, abandoned or expired (the Status field). If the patent (or application) is not active, then it is free to build upon or use. If the patent is active, and you have concern, then you will want to consider alternative methods to doing the same thing = “work arounds”.
Fifth, for the patents in force, see who owns them now. The PTO has another section that provides information on current assignees, or the owners of patents, and maintains records on who the current owner is (yes, many patents change hands). Large companies, like P&G and IBM, have specific programs to license out technology, and all universities have a mandate to see their research commercialized, so while considering work-arounds, also consider the benefit of reaching out to the company. Yes, this strategy has risks but most entities want to expand the reach of technology, not wave a stick at interested parties.
Expert’s secret: Patents aren’t the only thing that can be licensed if you approach a company. Many firms are interested in knowledge sharing and partnering in manufacturing or supply chain to further exploit know-how.
A last thought: Reviewing the claims is almost always best left to a professional IP attorney. While doing the above will allow many of you to test whether the idea/product you’re considering is worth pursuing patent protection for, the claims of a patent are critical and the language is best analyzed by lawyers. Being educated will make it easier to work with pro’s and will allow you to save a lot of money by filtering out the concepts that have been thought of before.
We’ve found using the above five steps have made our searching process more structured, faster and the time from start to finish easier to predict.
Hope you find what you’re looking for.