A search of previous public disclosures (known as prior art) including, but not limited to, previously patented inventions in the US should be conducted to determine if an invention has been publicly disclosed and thus is not patentable. While a search of the prior art before the filing of a patent application is not required, it is advisable to do so.
Various online resources are available for searching patent and other prior art literature. Some of the patent offices provide publically accessible online databases. Examples include the United States Patent and Trademark Office (USPTO), European Patent Office (EPO), Japanese Patent Office (JPO), and World Intellectual Property Organization (WIPO). Examples of commercial online patent databases include Google Patents, Delphion, Espace, and FreePatentsOnline. It is also sometimes helpful to search the databases of technical organizations for published literature, industry standards, etc. Examples of such technical organizations in the US include the American Society of Mechanical Engineers (ASME), Institute of Electrical and Electronics Engineers (IEEE) and Society of Automotive Engineers (SAE). Similar technical organizations also exist in other countries and regions, such as Europe.
For the most part, patent literature can be searched using keywords and other search strategies. However, a problem with keyword searching is that the effectiveness of such searching depends upon the keywords chosen by the author of the prior art literature. The use of non-traditional terms can be unintended in instances where the author is not familiar with the technology, or can even be intended if the author does not wish for competitors to learn of certain technical solutions to problems, etc.
It is often effective to begin searching using keywords relating to the subject matter of the particular invention being searched. Then, if the number of “hits” returned by the search is too large, add more relevant search terms to keep limiting the number of hits until the number becomes reasonable to analyze. If the number of hits is still borderline, another technique is to then review the abstracts to limit the number of relevant results. If that doesn’t work, try looking at the titles of the references. The key is to start broad and keep narrowing down the search results until you get to a number that is manageable.
Another search strategy is to search the patents of competitors selling the same type of products as the invention being searched. Yet another search strategy is to locate one or more patents that appear to be close to the invention being searched, then search the list of cited references on the face of the patent. A further technique is use the “cited by” search query to find later patents that cite a patent close to the invention being searched.
From the foregoing it is apparent that searching patents and other prior art literature to determine whether an invention is patentable is not a simple task. Taylor IP searches inventive subject matter for purposes of determining the patentability and/or infringement issues associated with an invention. We can search both US and foreign prior art. Typically we use the services of an outside searcher and then analyze the prior art returned from the search to provide a patentability and/or clearance opinion. However, we also conduct online searches ourselves when under tight deadlines or the subject matter is such that we have a particular in-house expertise.
