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By J.D. Houvener
Patent Attorney and Founder

Did you know that you have to use a Boolean string to properly search prior art in the database? You might not have known that. Stick around to learn about what you need to know before you do your patent search.

[Music]

Hey everyone, I’m JD Hoover, managing partner here at Bold Patents Law Firm. I’m so excited to be with you here today to talk about the six steps that you’ve got to take to perform a patent search the right way.

Step One: Making sure you understand what a patentability search really is and what it’s not. Patentability, kind of a long word, right? Patent obviously, you kind of get that. Patent is the grant the government gives you 20 years exclusive rights once you have your invention granted the patent. Patentability, I just sort of ask the question: is this even possible? Has someone else already invented what you’ve invented? So, to get a grasp on what the search really is, what encompasses, you’ve got to start with eligibility. So, patentability comprises eligibility, novelty, non-obviousness, and the last part, utility.

Let’s first talk about eligibility. Eligibility is all about are you even in the right ballpark? Is this the right area of law for you? You might think, “Okay, I’ve got this new invention. Is it really something that qualifies?” First up is section 101, this is invention eligible. So, we’ve got to think about: Is it an abstract idea? If this invention is more akin to a natural phenomenon or part of what’s already out there in the world, that is not eligible for patenting. Another thing not eligible for patenting is processes that are purely financial or mainly human interactions; those are not that knowledgeable either.

Patentability Opinion: Something that’s generated by an attorney, it’s not something put together by a patent agent or someone else in the industry in marketing and that sort of thing. I’m not going to mention any names, but there are plenty of firms out there touting their expertise in patents that aren’t necessarily the patent attorneys. To be a patent attorney, as you may not know, you’ve got to go through four years of engineering school, go to law school, and then pass a patent bar on top of the state bar. So, a patent attorney is quite credentialed and they’re trained to specifically help you.

What a patentability search is, is we’re researching worldwide looking at not just the United States, but every single country or anywhere on the internet where information about an invention like yours could be found. The examiner, once you get your application submitted, is going to do the same thing. Here at Bold, we put ourselves in the shoes of the examiner to do the best job we can to make sure we get you the information so you can make the best decision. By searching the world, we’ve got to start with the best databases, and believe it or not, Google is where we start. So, we’re going to get into that down the road.

Another thing about patent services is it’s not just a matter of searching for your exact invention. As we’re going to talk about, convention disclosures are key. So, we’re going to talk about how your invention may first look. As we talk about your invention, we’ll actually expand it out from there. If it’s a cheap search, under $500, even under a thousand dollars, that’s kind of an indicator that there’s probably not an attorney involved. I’ve actually seen these; we’ve got clients that come in and see us and say, “Look, I’ve already gotten the patent search done. Let’s move on to the next stage.” And they’ll bring in this phone book-sized copy of a patent search. It was produced in mass volume to seem like it was a very enriched, thorough search when they just printed out the whole length of the documents they found and printed them in a big volume. But what these searches tend to lack is an actual opinion that you can rely on to make a decision about whether you move forward or not with your patent application. As you may not know, patent applications and the whole process can be many thousands of dollars, so it’s no small drop in the bucket to make a decision about this. So, a patent search alone is good but it’s not actually what you need to move to the next phase; what you need is an opinion by a patent attorney.

Step Two: Invention Disclosure. The inventor, you, right? You’ve got your invention, this is your baby. When you come to an attorney like this, we’re going to sit down with you and talk about your invention and how you might plan on bringing this to market. But what’s bigger, the bigger picture is your invention in terms of what it could look like and all the alternative and bodiness that it could and should be. That’s what we’re going to be performing our patent building search on – this greater version of your invention.

Think about other materials that you could use, think about the ways that the two parts could fit together if it wasn’t using a bolt, right? Some other type of fasting – ribbon or who knows, a couple that says a detachable removable piece. Lots of different ways that parts can move and change and interchange and even be part of a new industry. So, it gets the same part of our job is to help inventors expand their inventions so we can conduct a really good proper search. Part of what’s involved in doing this expansion, as I mentioned, is getting to the heart of the invention and getting the inventor to tell us about their invention. This process called The Invention Disclosure process helps them to fully relate what they’ve been through. So, one of the first things we talk about with invention disclosure is the history – how far back did it first get conceived? When did the inventor or co-inventors first create this invention? That’s what we want to look back on – the history, what was involved with that right up front movement.

And then it’s very important from there to talk about a timeline – when that invention, if ever, was disclosed or sold to the public. Unfortunately, if it’s been more than a year since you’ve published or sold your invention, it’s not eligible for filing. So, this first step of getting the history down is key. The second step you’re going to talk about within step two is making sure you get the invention employment or employer history figured out too. Oftentimes, we have inventors that are working day jobs and you might be too if you’re listening and watching this. Inventions can certainly be created on the job or even after hours. It’s important to understand that many companies have very strong, rigorous contracts that will actually cause you to have to assign meaning give rights to your invention to your employer if it was invented on the job and even if it’s related to your job, you did it off hours, they may have rights to own them. So, that’s important to understand the employer-employee relationship moving forward.

The next part of the invention disclosure process is taking a look at the prototype if there is one. For hardware consumer products, this is important because getting your hands on it or at least seeing photos or videos of the actual invention can help the patent attorney see the different features. This is important if it’s just in the drawing free prototype phase. Doing as much as you can to bring about three dimensions, and it may mean that we work with an engineer, a CAD software engineer to create that so we can actually turn it around through the folds and the connections and how that could apply even before doing the search.

I want to take a little break here after this step and see if you are getting the value out of this video. If you’re enjoying this material, I want to make sure you share it with others, and one great way to do that, very simple, is just to like this or share it on social media with someone you know or your distribution group. We want to get the word out about this material.

Step Three: We need to identify and boil it down to three to five key features about your invention. I know that might be hard, right? You want to talk about your invention like it’s your baby. This is what you talk about when you live and breathe, this is your hobby perhaps. But it’s so important for us to be able to boil it down to a nice subset of keywords and phrases that we can use across all the databases to construct sort of a 95 to 99 confidence interval in the subject matter we’re looking at. As in step two, we just talked about it, we’re going to be getting the full breadth of what your invention is, being able to search on all of that could take forever in theory, right? We’ve got to build a search to put some balance on what about your invention you think is novel. For this piece, we’re going to be looking at you and perhaps your team if you’ve got one on your gut, you know the industry is likely better than we do. What is it about your invention you think you’ve never seen before? What specific aspect or functionality of your invention is key? So, we’re going to work with you as attorneys, as technical advisors, with you to pull out those three to five key terms. And that’s what we’re going to start doing our search on.

We have built, and I’ve drafted myself, a blog article that goes into these subjects in a lot more detail. We feel like we want to serve as many individual small business, large company, and better as possible.

Step Four: Searching broadly. Okay, we’ve done a lot here, we’ve covered lots of different steps. This is the step that comes right after we’ve narrowed it down, right? We’ve compacted those key phrases, the nuance, the subtleties of how you think your invention is functional. So, once we’ve got that down, now we’re going to actually search very broadly on those compacted keywords, and the best place to start is Google. Google is the number one natural language search vehicle on the planet, and why would patent attorneys ignore that? We start with Google to make sure we understand the breadth of the patent literature and non-patent literature that’s out there.

Another thing not eligible for patenting is processes that are purely financial or mainly human interactions; those are not that knowledgeable either.

Patentability Opinion: Something that’s generated by an attorney, it’s not something put together by a patent agent or someone else in the industry in marketing and that sort of thing. I’m not going to mention any names, but there are plenty of firms out there touting their expertise in patents that aren’t necessarily the patent attorneys. To be a patent attorney, as you may not know, you’ve got to go through four years of engineering school, go to law school, and then pass a patent bar on top of the state bar. So, a patent attorney is quite credentialed and they’re trained to specifically help you.

What a patentability search is, is we’re researching worldwide looking at not just the United States, but every single country or anywhere on the internet where information about an invention like yours could be found. The examiner, once you get your application submitted, is going to do the same thing. Here at Bold, we put ourselves in the shoes of the examiner to do the best job we can to make sure we get you the information so you can make the best decision. By searching the world, we’ve got to start with the best databases, and believe it or not, Google is where we start. So, we’re going to get into that down the road.

Another thing about patent services is it’s not just a matter of searching for your exact invention. As we’re going to talk about, convention disclosures are key. So, we’re going to talk about how your invention may first look. As we talk about your invention, we’ll actually expand it out from there. If it’s a cheap search, under $500, even under a thousand dollars, that’s kind of an indicator that there’s probably not an attorney involved. I’ve actually seen these; we’ve got clients that come in and see us and say, “Look, I’ve already gotten the patent search done. Let’s move on to the next stage.” And they’ll bring in this phone book-sized copy of a patent search. It was produced in mass volume to seem like it was a very enriched, thorough search when they just printed out the whole length of the documents they found and printed them in a big volume. But what these searches tend to lack is an actual opinion that you can rely on to make a decision about whether you move forward or not with your patent application. As you may not know, patent applications and the whole process can be many thousands of dollars, so it’s no small drop in the bucket to make a decision about this. So, a patent search alone is good but it’s not actually what you need to move to the next phase; what you need is an opinion by a patent attorney.

Step Two: Invention Disclosure. The inventor, you, right? You’ve got your invention, this is your baby. When you come to an attorney like this, we’re going to sit down with you and talk about your invention and how you might plan on bringing this to market. But what’s bigger, the bigger picture is your invention in terms of what it could look like and all the alternative and bodiness that it could and should be. That’s what we’re going to be performing our patent building search on – this greater version of your invention.

Think about other materials that you could use, think about the ways that the two parts could fit together if it wasn’t using a bolt, right? Some other type of fasting – ribbon or who knows, a couple that says a detachable removable piece. Lots of different ways that parts can move and change and interchange and even be part of a new industry. So, it gets the same part of our job is to help inventors expand their inventions so we can conduct a really good proper search. Part of what’s involved in doing this expansion, as I mentioned, is getting to the heart of the invention and getting the inventor to tell us about their invention. This process called The Invention Disclosure process helps them to fully relate what they’ve been through. So, one of the first things we talk about with invention disclosure is the history – how far back did it first get conceived? When did the inventor or co-inventors first create this invention? That’s what we want to look back on – the history, what was involved with that right up front movement.

Then it’s very important from there to talk about a timeline when that invention, if ever, was disclosed or sold to the public. Unfortunately, if you spend more than a year since you’ve published or sold your invention, it’s not eligible for filing. So, this first step of getting the history down is key.

The second step you’re going to talk about within step two is to make sure you get the invention employment or employer history figured out too. Oftentimes, we have inventors that are working day jobs, and you might be too if you’re listening and watching this. Inventions can certainly be created on the job or even after hours. It’s important to understand that many companies have very strong, rigorous contracts that will actually cause you to have to assign, meaning give rights to your invention to your employer if it was invented on the job, and even if it’s related to your job, you did it off hours, they may have rights to own them. So, that’s important to understand the employer-employee relationship moving forward.

The next part of the invention disclosure process is taking a look at the prototype if there is one. For hardware consumer products, this is important because getting your hands on it or at least seeing photos or videos of the actual invention can help the patent attorney see the different features. This is important if it’s just in the drawing free prototype phase. Doing as much as you can to bring about three dimensions, and it may mean that we work with an engineer, a CAD software engineer to create that so we can actually turn it around through the folds and the connections and how that could apply even before doing the search.

I want to take a little break here after this step and see if you are getting the value out of this video. If you’re enjoying this material, I want to make sure you share it with others, and one great way to do that, very simple, is just to like this or share it on social media with someone you know or your distribution group. We want to get the word out about this material.

Step Three: We need to identify and boil it down to three to five key features about your invention. I know that might be hard, right? You want to talk about your invention like it’s your baby. This is what you talk about when you live and breathe, this is your hobby perhaps. But it’s so important for us to be able to boil it down to a nice subset of keywords and phrases that we can use across all the databases to construct sort of a 95 to 99 confidence interval in the subject matter we’re looking at.

So, as in step two, we just talked about it, we’re going to be getting the full breadth of what your invention is. Being able to search on all of that could take forever in theory, right? We’ve got to build a search to put some balance on what about your invention you think is novel. For this piece, we’re going to be looking at you and perhaps your team if you’ve got one on your gut, you know the industry is likely better than we do. What is it about your invention you think you’ve never seen before? What specific aspect or functionality of your invention is key? So, we’re going to work with you as attorneys, as technical advisors, with you to pull out those three to five key terms, and that’s what we’re going to start doing our search on.

We have built, and I’ve drafted myself, a blog article that goes into these subjects in a lot more detail. We feel like we want to serve as many individual small business, large company, and better as possible.

Step Four: Searching broadly. Okay, we’ve done a lot here, we’ve covered lots of different steps. This is the step that comes right after we’ve narrowed it down, right? We’ve compacted those key phrases, the nuance, the subtleties of how you think your invention is functional. So, once we’ve got that down, now we’re going to actually search very broadly on those compacted keywords, and the best place to start is Google. Google is the number one natural language search vehicle on the planet, and why would patent attorneys ignore that? We start with Google to make sure we understand the breadth of the patent literature and non-patent literature that’s out there.

Another thing not eligible for patenting is processes that are purely financial or mainly human interactions; those are not that knowledgeable either.

Patentability Opinion: Something that’s generated by an attorney, it’s not something put together by a patent agent or someone else in the industry in marketing and that sort of thing. I’m not going to mention any names, but there are plenty of firms out there touting their expertise in patents that aren’t necessarily the patent attorneys. To be a patent attorney, as you may not know, you’ve got to go through four years of engineering school, go to law school, and then pass a patent bar on top of the state bar. So, a patent attorney is quite credentialed and they’re trained to specifically help you.

What a patentability search is, is we’re researching worldwide looking at not just the United States, but every single country or anywhere on the internet where information about an invention like yours could be found. The examiner, once you get your application submitted, is going to do the same thing. Here at Bold, we put ourselves in the shoes of the examiner to do the best job we can to make sure we get you the information so you can make the best decision. By searching the world, we’ve got to start with the best databases, and believe it or not, Google is where we start. So, we’re going to get into that down the road.

Another thing about patent services is it’s not just a matter of searching for your exact invention. As we’re going to talk about, convention disclosures are key. So, we’re going to talk about how your invention may first look. As we talk about your invention, we’ll actually expand it out from there. If it’s a cheap search, under $500, even under a thousand dollars, that’s kind of an indicator that there’s probably not an attorney involved. I’ve actually seen these; we’ve got clients that come in and see us and say, “Look, I’ve already gotten the patent search done. Let’s move on to the next stage.” And they’ll bring in this phone book-sized copy of a patent search. It was produced in mass volume to seem like it was a very enriched, thorough search when they just printed out the whole length of the documents they found and printed them in a big volume. But what these searches tend to lack is an actual opinion that you can rely on to make a decision about whether you move forward or not with your patent application. As you may not know, patent applications and the whole process can be many thousands of dollars, so it’s no small drop in the bucket to make a decision about this. So, a patent search alone is good but it’s not actually what you need to move to the next phase; what you need is an opinion by a patent attorney.

Step Two: Invention Disclosure. The inventor, you, right? You’ve got your invention, this is your baby. When you come to an attorney like this, we’re going to sit down with you and talk about your invention and how you might plan on bringing this to market. But what’s bigger, the bigger picture is your invention in terms of what it could look like and all the alternative and bodiness that it could and should be. That’s what we’re going to be performing our patent building search on – this greater version of your invention.

Think about other materials that you could use, think about the ways that the two parts could fit together if it wasn’t using a bolt, right? Some other type of fasting – ribbon or who knows, a couple that says a detachable removable piece. Lots of different ways that parts can move and change and interchange and even be part of a new industry. So, it gets the same part of our job is to help inventors expand their inventions so we can conduct a really good proper search. Part of what’s involved in doing this expansion, as I mentioned, is getting to the heart of the invention and getting the inventor to tell us about their invention. This process called The Invention Disclosure process helps them to fully relate what they’ve been through. So, one of the first things we talk about with invention disclosure is the history – how far back did it first get conceived? When did the inventor or co-inventors first create this invention? That’s what we want to look back on – the history, what was involved with that right up front movement.

And then it’s very important from there to talk about a timeline when that invention, if ever, was disclosed or sold to the public. Unfortunately, if you spend more than a year since you’ve published or sold your invention, it’s not eligible for filing. So, this first step of getting the history down is key.

I want to take a little break here after this step and see if you are getting the value out of this video. If you’re enjoying this material, I want to make sure you share it with others, and one great way to do that, very simple, is just to like this or share it on social media with someone you know or your distribution group. We want to get the word out about this material.

Step Three: We need to identify and boil it down to three to five key features about your invention. I know that might be hard, right? You want to talk about your invention like it’s your baby. This is what you talk about when you live and breathe; this is your hobby perhaps. But it’s so important for us to be able to boil it down to a nice subset of keywords and phrases that we can use across all the databases to construct sort of a 95 to 99 confidence interval in the subject matter we’re looking at.

So, as in step two, we just talked about it, we’re going to be getting the full breadth of what your invention is. Being able to search on all of that could take forever in theory, right? We’ve got to build a search to put some balance on what about your invention you think is novel. For this piece, we’re going to be looking at you and perhaps your team if you’ve got one on your gut, you know the industry is likely better than we do. What is it about your invention you think you’ve never seen before? What specific aspect or functionality of your invention is key? So, we’re going to work with you as attorneys, as technical advisors, with you to pull out those three to five key terms, and that’s what we’re going to start doing our search on.

We have built, and I’ve drafted myself, a blog article that goes into these subjects in a lot more detail. We feel like we want to serve as many individual small business, large company, and better as possible.

Step Four: Searching broadly. Okay, we’ve done a lot here; we’ve covered lots of different steps. This is the step that comes right after we’ve narrowed it down, right? We’ve compacted those key phrases, the nuance, the subtleties of how you think your invention is functional. So, once we’ve got that down, now we’re going to actually search very broadly on those compacted keywords, and the best place to start is Google. Google is the number one natural language search vehicle on the planet, and why would those attorneys ignore that? We start with Google to make sure we understand the breadth of the patent literature and non-patent literature that’s out there. And we’ll talk about what the differences are between those in much more detail on the website, so go check that out if you want.

We’re going to just keep this video very succinct here today. We’re going to plug each one of those three to five super compressed very functional key phrases that make your invention novel. Make sure that we get our arms around what’s out there once in the world is over. So once you figure that out, we’re moving on to step five.

All right, you guys have stuck with this video for quite a while. I want to show you one thing here. This is Bold Ideas Inventor’s Guide to Patents. I wrote this book myself just over a year ago, and it covers the basics. And when I say the basics, I mean every single thing you need to know about patents from a pretty high level. If every inventor came into my office knowing this information, we will get right to the details and start on the legal aspects of your case right away. So, please save yourself some time, explore the subject matter if you’re curious. You can get this for free on my website at boldip.com today.

Step Five: Narrowing your invention down and the search to the classifications. Okay, the last step we just talked about how we’re doing a big broad natural language search on Google covering worldwide patented non-patent literature. This is a huge amount of work. Once we finally get that body of industry, body of technology, at least on the table, now it’s time to look into the patents only documents and slide those up into technology and industry-specific classifications. As you probably saw on a patent document, you can check it out right here, the classifications are listed in numerals. They usually have one through a hundred, many different numbers of classifications out there, and there are different class-based systems.

What you can do is you can take those classification numbers and put that into the an office search tool within the US or abroad. It’ll pull up any application published or grant that was associated with that specific industry. If you want to learn more about how to get into the nuances of reading classifications and searching into the details there, check that out on our website. So, you’ll pull up everything related to that, and then guess what? We’re going to search against one or more of our specific keywords that we just boiled down as part of step three.

Step Six: We made it to the end. We’re talking about now not just doing searches on the patent websites but looking at this other block of non-patent literature. Surgeon in step four, we talked about getting that big broad search, right? We’re covering all sorts of documents, patent documents from around the world, including the US and non-patent literature, right? Anywhere online, including kickstarters, academic journals, publications, newspapers, you name it. These are all outlets where someone in the industry that you’re inventing in is going to know about. And examiners do their best to figure out what would someone inventing in this industry.

If you’re inventing, what would they know? What would they have knowledge of that could act to prevent you from getting a patent? So, it’s our job to look at all those non-patent literature documents to see if there are any disclosures and talks about your invention, or anything that would make your invention seem obvious. Any kind of variation or discussion about what you’ve done is going to be important, and we’re going to find it. You’ve done it, we’ve reached the end.

This is something I’m so passionate about – getting a solid patent search upfront is key because it’s what sets the stage for you to make a phenomenal decision about whether to move forward or not with your invention. I am encouraged by the fact that we’re able to get this information to you, and I am hopeful that you can share this with people you know.

I just wanted to wrap up the show and say thank you so much for tuning in, for watching the six steps to move your patent from idea to invention, moving your visionary concept into the future. Please visit bullpens.com and get your free book – that’s what it’s all about. It’s about moving the inventors’ power more towards the individual, more towards the small business, to drive that innovation into the marketplace so that we all become smarter and more efficient.

The reason why I’m training everyone here, why I’m publishing this video, isn’t so that you all go off and attempt to do a professional patentability search. My intention is so that you get trained, you see what I’m talking about, you hear about these terms, you understand the importance of a patentability search. So, you can begin doing your own unprofessional but do your own diligence. Do some initial research upfront to prove to yourself that your invention is patentable.

It’s my hope that you come speak with us at Gold Patton’s Law Firm because we know what it takes to move your invention from idea to invention to the tax grants. We have a free consultation with one of our trained advisors that’s ready today to listen to your invention, to see if it qualifies, to see if it meets that eligibility requirement. And as needed, they’re going to book you with one of our attorneys to get that vital information that you need to move to the next stage. Today, go to boldpatents.com.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/