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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


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 Affinity I just sort of asked the question is this even possible is someone else already invented which you’ve invented and so to get a grasp on what the search really is what what encompasses you’ve got to start with eligibility so patentability comprises eligibility novelty non-obviousness and at the last part utility so let’s first talk about eligibility so eligibility is all about are even in the right ballpark is this the right area of law for you and you might think okay well I’ve got this new invention is it really something that qualifies so first up is section 101 this is invention eligible and so we’ve got to think about is all right look at the law the way it is you have three main areas the first one is uh is it an abstract idea so if this invention is more akin to like a natural phenomenon or akin to like part of what’s already out there in the world um that is going to be not eligible for patenting um another thing is not eligible for patenting is processes that are purely Financial or are mainly human interactions those are not that knowledgeable either the patentability opinion is 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 and paths that aren’t necessarily the patent attorneys to be a patent attorney is 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 line so a patent attorney is quite credentialed and they’re trained to specifically help you the invention so what a patent ability search is is we’re researching worldwide looking at not just the United States but every single country or anywhere on the internet that information about invention invention like yours could be found examiner once you get your application submitted it’s 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 you can make the best decision so 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 are it’s not just a matter of searching in your exact invention as we’re going to talk about convention disclosures key and so we’re going to talk about how how it is that your invention May first look and as we talk about your invention will actually expand it out from there likely if it’s a cheap under 500 even under a thousand dollars that’s kind of an indicator that there’s really probably not an attorney involved and I’ve actually seen these we’ve got clients that come in and see us and say look I’ve already gotten the patent Searcher done let’s move on to the next stage and they’ll bring in this you know phone book size copy of a patent search and it was produced you know in a mass volume to kind of seem like it was a very enriched thorough search when they just printed out the whole length of the documents that they found and just 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 what do 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 bucket to make a decision about this and so 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 and we get that when you come to an attorney like this we’re going to sit down with you and talk about sure your invention and how you might plan on bringing this to Market but what’s bigger 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 needs to go Ribbon or who knows a couple that says a detachable removable piece lots of different ways that Parks can move and change and interchange and even be part of a new industry so it gave us 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 and so 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 history right how far back did it did it first get conceived when did the inventor or co-inventors first create this eventually that’s what we want to look back on harness the the intent 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 to 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 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 take taking a look at the the Prototype if there is one for Hardware consumer products this is important because it’s 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 who want to get the word out about this material all right step three we need to identify and boil it down to three to five key features about your intervention I know that might be hard right you want to talk about your intervention like it’s your baby this is this is what you talk about when you live and breathe this is your hobby perhaps um 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 gonna 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 for functionality but 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 the subtleties of how you think your invention is functional and 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-pat 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 to 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 okay 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 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 of Industry body of Technology at least on the table now it’s time to look into the patents only documents and slides 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 that you’re inventing them what would they know what would they have knowledge of if that could act to prevent you from getting a pet so it’s our job to look at all those non-patent literature documents to see if there’s any disclosures and in the talks about your invention or get this anything that would make your invention seem obvious any kind of all variation or discussion about what you’ve done that’s 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 is getting a solid patent searched up right up front it’s key because it’s what sets the stage so that’s what drives you to make a phenomenal decision about whether you move forward or don’t with your convention I am encouraged by the fact that we’re able to get this information up to you and I am so hopeful that you’re able to share this with people that 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 get visit and get your free book that’s what it’s all about it’s moving the inventors power right more toward 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 wrong often to attempt to do a professional patentability search my intention is so that you get trained and you see what I’m talking about you hear about these terms you understand the importance of a patentability search so that you can begin doing your own unprofessional but do your own diligence right do some initial research up front to prove to yourself that your invention is patentable and 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 get that Vital Information that you need to move to the next stage today go to

don’t be go bold foreign

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