5 tips for patent searching - how to get ahead of the game

Why search for patents?

There are two main reasons-

  1. Freedom to operate. This search seeks to answer the question "will I infringe anyone else's patent if I make / sell / import this item?".

  2. Patentability. In other words- "can I get a patent for this?".

Searching is a complex art which most patent attorneys avoid like the plague- we tend to outsource to specialists. That said, as an aspiring inventor with a good idea, there is some preliminary searching you can do yourself to get a head start. Here are 5 tips to get you started.

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1. The best free websites to use

Espacenet is the most well-known, and contains a comprehensive database of 90 million patent documents. The "Advanced search" is a good place to start, and is easy to use for these popular searches:

  • Keywords in the title or abstract (avoid searching the titles only- they are often deliberately obscure);

  • Applicant name- i.e. if you have an idea that someone else has a patent. Try and use the most generic form of the name- e.g. "Airbus" instead of "Airbus Operations UK Limited".

The main drawback of espacenet is it's lack of full-text searching

Google patents has come a long way since it was introduced. One advantage is has over espacenet is full text searching. The interface for browsing patents is a lot more user-friendly and easier to navigate as well. You can also construct complex searches as explained here, or start with a keyword search and add further filters on the search page.

2. Use generic keywords

Keywords are the easiest way to search- much more so than the patent classification (more on that below). When you use keywords, understand that patent attorneys always try to use the most general form of the phrase- particularly in the title and abstract.

Therefore instead of searching for "coffee cup" think about terms like "beverage" and "container". Instead of "iPad case" use a search string like "(cover or case) and (tablet or phone or computer)". This will give you more chance of finding something relevant.

Industry specific jargon and trade marks should also be avoided, unless they are the accepted norm and / or there are simply no generic alternatives.

3. Narrow the search

The art of searching is all about trying to narrow the scope to a point where the results are manageable in number, but not so much that you miss something important. Therefore it is good to minimise the number of irrelevant results.

If you are searching for "freedom to operate", then limit the application date to the last 20 years- this is the longest most patents will last. Similarly, if you are interested in patents which could affect your freedom to operate in the UK, then you only need to look for patents and applications published with the prefixes GB (UK national), EP (European) or WO (international).

If you are searching for patentability, then you need to cast the net much wider. If your invention was disclosed in a Chinese patent 25 years ago, it could still stop you getting a patent granted yourself.

4. Think about citations

When the various patent offices around the world check to see if an invention is patentable, they also undertake searching. Therefore patents are linked- the database is like a giant web. If you find something which appears relevant, take a look at (i) older patents cited against it and (ii) newer patents which cite it. Chances are, they will be relevant too. Citations are a very powerful way of finding patent documents.

5. Understand your results

This comes back to why you are doing the search. It is very important to separate "freedom to operate" and patentability, and look at each document from both points of view.

When looking at freedom to operate, we need to consider:

  1. What is the patent status? It could be pending, granted or abandoned. This information can be found in the national registers (best to ask your attorney!).

  2. Is the patent in-force in the place where we want to work the invention?

  3. Do the claims of the patent cover what we want to do? Again- patent attorneys are experts at answering exactly this question.

When looking at patentability, the considerations are different:

  1. Does the document disclose our invention in its entirety?

  2. If not, are the features which are not disclosed advantageous (or more specifically, inventive)?

As should be clear, searching is a complex task, and any search on which you want to rely should be undertaken by a professional. That said, some initial searching can give you a heads-up and save time and money down the line.

patentsPhil Sanger