I want to start by saying that doing a patent search is by far and away the most difficult part of the patent process. It’s most difficult because it’s often a very daunting task.
I get asked all the time, how to do a patent search, and while I wish I could get jumping-up-and-down excited about it, I can’t because I know it’s going to take a rolling-up-the-sleeves attitude, and a whole lot of passion to get it done right.
There is nothing glamorous about it, and it requires digging through (and reading) hundreds if not thousands of publications to assess the merits of an invention.
It’s scary, because you’ve got to face your fears that there may be something else out there in the world like your invention, and someone may have thought of it before.
It’s stressful having to stop and do research before taking exciting action (like filing a patent application) because you think that someone else is on the verge of filing a patent application on the same invention.
However, I can’t think of a more rewarding process.
The results of a professional patent search coupled with a legal opinion from a Patent Attorney is exactly what every inventor and business owner/entrepreneur needs to receive (and fully comprehend) prior to moving forward with their invention.
It’s often a very hard truth to face. That your invention is not in fact, all that new, or that there is very little room to innovate, and the scope of rights is smaller than you imagined – and the unique selling proposition is diminished in a way.
I love delivering this news though. I love providing the truth as it is the best way to truly help our clients on their journey to compete in the vast marketplace. They deserve to know it.
In this article, I’m going to outline the complete process on how our Patent Attorneys perform a patentability search. If watching is more your jam, check out this video I did on Patent Searching:
I’m doing it in part to help educate those in the world that may read this and truly need it. Meaning – they can’t afford to hire anyone to get it done for them, and therefore they will be able to get top quality advice when they need it the most.
There is a difference between a patent search and a comprehensive prior-art search (which is needed for patentability). A patent search is what it sounds like, a search for patent documents that might have import on your invention…but it stops there. There is an entire world of non-patent documents that must be considered as part of the broader “prior art” when you perform your comprehensive search.
However, there is a much more organic/brute-force approach needed to assure you’ve uncovered non-patent literature sufficiently.
Some examples of non-patent literature are:
Websites (e.g. Kickstarter, Facebook, YouTube, [yeah…this is a lot])
**NOTE** For simplicity’s sake, I use the term “patent search” throughout this article just because it’s the common phrase for it, and I’m trying to educate every inventor here – so I’m casting a wide net. Now, you’re on the inside, and you know that I mean “comprehensive prior art search” when I say “patent search”. Shhh, that’ll be our little secret.
The Goal of a Patent Search
The goal of the patent search is to inform you, the inventor, about patentability. Patentability is the bigger – more important question that will need to be answered using the results of the patent search.
Patentability means that an invention is Eligible and has both Novelty and Non-Obviousness. This means that the invention is an accepted subject-matter (eligibility), is one-of-a-kind in the whole world (novelty), and that there have been no publications/patents that have suggested that it could be done (non-obviousness)
A quick note on Subject Matter Eligibility, as it is the threshold criteria, I have a great article on point for you to read up on to assure patent law will work for you.
In terms of the overall process, the entire patent search must be followed by analysis and if being done by a Patent Professional, then it should conclude with a legal opinion.
Again, the PATENT SEARCH informs a Patent Attorney to help them provide you, the inventor/entrepreneur a LEGAL OPINION as to the potential rights that may be achieved if a patent application were sought.
**Don’t miss that!! The real value of working with a Patent Attorney is that Legal Opinion. I know it sounds obvious, but that’s what you are left with at the end, instead of a (seemingly) endless list of prior art...you instead have a nice clean professional opinion on what you should do. That’s worth gold.
Lastly, it is with the Legal Opinion “gold”, that the inventor/entrepreneur can then form a BUSINESS DECISION as to whether the risk of investment into the patent application will be worth it.
I realize there are a lot of options out there for you to consider when doing your patent search, so I wanted to lay them all out for you. I think, after you read through, the only option is to hire a Patent Attorney.
Taken all together now – here is the equation for how to get to patentability:
PATENT SEARCH + LEGAL OPINION = PATENTABILITY
Yay! You’re Half-Way There Now!
I know, right? Breathing heavy already? C’mon, you can do it!!!
The brutal truth: You can have the most patentable invention in the world, but it may be the worst idea commercially ever, and therefore, the inventor will not see success in the end.
Getting the patent is just part of the effort to fully commercialize your invention. As the inventor, you will almost certainly need to join forces with others to test it, design it for the market, align manufacturing, package and sell it. Even if your goals are to license/sell your invention, you’ll have to hustle, network, pitch, and proactively sell your invention to would-be licensees or buyers.
It’s that unique combination of a solid patent portfolio mixed with hustle and determination that is most likely to lead to a commercially successful product.
I say that because it’s true that every invention is a success in terms of technical improvement, as the inventor has in essence made us all smarter through their unique contribution (woot! props to you inventors!), but it is up to the inventor to “make it rain” if money or commercial success is what they are after.
Therefore, if cold hard cash is what you’re after (ok, probably warm checks would do too, right?) It is critical to assess the market prior to investing money into any venture, especially one as time and capital-intensive as the patent process.
Much like patentability from above – no matter how much market research you compile, or read through, you’ll still be left with a seemingly endless pile…unless you hire a professional to give you their opinion on what that pile means for your potential success in that niche you’ve carved.
So, here is the equation for how to get to Marketability:
MARKET RESEARCH + BUSINESS OPINION = MARKETABILITY
The Ultimate Equation
Last but not least, the formula for making the best business decision is therefore following a Patent Success Matrix that looks at both patentability and marketability as follows:
PATENTABILITY + MARKETABILITY = SOUND BUSINESS DECISION
You Want to be in the GREEN!
As you probably could tell, from the Patent Success Matrix chart, you want to have an invention that is both patentable and marketable – See the Red X shown below:
As you can see too – there is sort of a range of green (shade of greens if you will), that is likely acceptable. Of course, this chart must be accompanied with solid analysis on the major areas of patentability (eligibility, novelty, and nonobviousness) as well as marketability (industry/size, competition, and barriers to entry) – all of which will be SO much more insightful than this rainbow chart. But… it should guide you and give you high-level sense of where you lay.
You DON’T want to be in the RED/ORANGE
On the contrary, you do NOT want your invention to fall anywhere near the red or orange colored areas of the chart (See Green X below):
This means that your invention is not very patentable (meaning maybe only a few features/elements will likely get allowed), and the market demand is either too weak, or there are too many competitors or challenges with the industry (barriers).
Yellow Line Helps to Guide Yes/No Decision
I have tried to use a yellow line to help inventors who may be close one way or the other. And, because I like Tennis… on the line counts as IN (a YES).
So, if your invention falls into one of the TWO blue (examples) X’s below, then you should expect to be successful, but you’ll have to push a bit harder than some, out hustle others and find a way.
The upper blue “X” shows that your invention is quite inventive and has a great chance of overcoming prior art objections/rejections and will have a nice scope of claims allowed. However, based on research, there isn’t very much demand for your product, or competition is pretty high.
To have success (and move the arrow to the right into the green) with the upper blue “X”, you’ll have to find ways of overcoming the market trouble by out-marketing, coming up with innovative strategies for commercials, using celebrity power, etc. to try to break through.
The lower blue “X” shows that you have very strong market potential based on your research. You may truly be one of the only players in the market and there is strong demand for your product along with price point, things are looking good! But, the patent rights are someone narrow, and your claim scope is not as broad as you’d like.
Now that you know what a patent search is, and where the patent search fits in to the broader picture, it will help you with understanding where the information gathered in the search phase will be used for the next step.
STEP 2: Invention Disclosure
You’ve probably heard of the saying, “you only get out of it, what you put into it”. Without a doubt, that is true here too.
Your Patent Attorney should understand the invention as well as you do before they conduct the search or opine on the results.
Brain dump time! Hold absolutely NOTHING back here. Tell your Patent Attorney everything you’ve ever conceived relative to this new invention including how you plan to use it or monetize it.
A good Patent Attorney will tease out the entire invention (and then some) by asking questions, seeking more information about certain aspects, functionality, or applications.
At Bold Patents we use an Invention Disclosure Document (IDD) form which goes through many questions about the invention itself, and gets the inventor thinking about alternative embodiments, or versions that may not now be implementable due to cost, but are certainly achievable, if money were no barrier.
This process of expanding the invention looks to further define the following:
How the invention would work with better/different materials?
What problems the invention would solve in other industries and how the invention would change to fit the needs of that product/solution?
If state-of-the-art technology were implemented into the invention, could it solve new problems?
A generically described invention, that has only loosely described structure, ambiguous functionality and features will return a search result that is only surface-level and very difficult to discern when it comes time to form a legal opinion on.
A well-defined invention on the other hand is much more straight-forward to search on and allows the Patent Attorney to do a deep dive search on the subject. Meaning, the better the inputs, the better the outputs.
There is no doubt that inventions change over the course of representation with many clients, especially after an application is submitted, and customers finally are able to give their feedback on a device/system. This is typical after filing a provisional patent application, and testing is done or customer feedback is sought.
NOTE: Even if the improvements are found after filing the nonprovisional patent application, you can always look to file a continuation patent application to capture new subject matter.
Hence, a subsequent search after making improvements is often necessary to assure that the improvements/changes in the invention are patentable. The process is the same as it will be described here.
Feature 3: Height Adjustable Cutting Device
Here, each major feature of this cutting device is identified in plain terms without going into too much detail. The goal is to guide the search, without directing it.
STEP 4: Begin Searching Broadly
For each of the defined key features, conduct a broad search using the Google Patent (and Advanced Google Patent search) which is the best natural language search on the planet.
You will want to check the box “Include non-patent literature” which will include journals, academic dissertations, thesis papers, newspapers, or other reports from around the world.
You may need to wade through several pages of results before you find a patent document with a disclosure that is on point or similar to your feature.
This is a very lengthy process and cannot be rushed. I would say at a minimum, no less than 4 hours should be spent with this initial phase of research, where each major feature of your invention gets a dedicated natural language search. Here is an example search:
As you search, and use different natural language keywords and phrases, make sure to use the Boolean search strings to aid in refining searches to help you hone in on the feature of interest. Here is a table of Boolean searches:
The goal is to find publications (which means patent document or non-patent literature document) that has some (but hopefully not all) which have at least one of the features and functionality of your invention so that you can hone-in on the best classification of the invention.
The best way to find patent documents that are similar to your invention is to search within the proper patent classification. There are many different patent classification systems out there, so you will need to slowly become familiar with them as you start to gather inventions that are similar to your invention.
This step is the one that can take quite long for someone not familiar with the USPTO search tools or navigating in the classification systems. If you’re doing it on your own, budget for at least 5 hours of time.
There are many, many classifications – but it will become critical to determine which classes your invention falls into to assure you’re researching the correct publications. Here is an exhaustive list of classes numbered 0-1000 at this link: https://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm
To keep things straightforward, I will talk only about just the US classification system. So, when looking at US patents, you can spot which class each patent is in easily, from the first page of the patent, see red circle below:
Here, you can see the “U.S. Cl” which means “United States Classification” is “83”. There are a lot of subclasses, but you’ve found the major class, which is defined by the USPTO as follows:
Class 83 is the residual locus of patents directed to methods and machines for penetrating material, without substantial reshaping flow of such material, by means of (1) a solid tool, or fluid current, either of which applies mechanical deforming force to the material by direct physical contact therewith, the fluid current forcing the material against a solid tool whose edge defines the line of cut; (2) a heated solid tool which directly engages the material (to effect penetration thereof by melting, or by transmission of mechanical energy, or both); or (3) opposed, controlled fluid currents.
After you’ve confirmed that for each distinct feature/functionality of your invention that you’ve got the correct classification, now, you’ve got to find the correct sub-classification(s) for your invention.
By identifying sub classifications, you will be able to refine your search to a manageable number of patent documents without spending months just reading and reading.
Subclass research will allow you to find a close brother/sister invention and then continue drilling down into the details of similar publications by following which patents the examiner cited as being close/similar.
When the invention of a close patent publication was being examined at the USPTO, the examiner did their best search to see what they could find in terms of prior art. So, why not use the hard work of that expert examiner? By using references/citations, you can. Here is a look back to our example – I’d start by researching the most recent references first:
Don’t forget, that this process of classification will not be useful at all for non-patent documents/publications. Therefore, we will need to have an equally robust way of reviewing non patent literature.
Step 6: Non-Google Searches
Once the broad search is complete, it is very important to conduct searches in other search engines that may have access to domestic and foreign patent publications that Google may not. Here is a list of websites to conduct searches at. The list serves as an example list, and is not exhaustive in any way:
We cannot rely on just Google to do the searching for our inventors, we need to assure we turn over every rock and seek out the best information possible. To do this, we actually go to these websites and perform distinct searches for each key feature and functionality.
What’s Next? Legal Opinion
It’s a great moment to take a break, and congratulate yourself, you’ve done a lot of the hard work and gathered a substantial amount of research, and no doubt are now well informed about the invention and the state of the art for the technology area that the invention is in.
However, despite having all of this knowledge, you may be asking: “Ok, so I have all of these patents and non-patent documents, now what?”. Well, to do it right, you will now need to analyze the results to decide which references are closest to yours.
This is the major drawback to only doing your own free patent search, you will in most cases be left scratching your head.
The kind of analysis needed here is legal. Yes, anyone can do it, but it will require a deep understanding of the statutory rules around patent law (35 USC 101, 102, and 103) and the lengthy case law history as it has evolved through the district, appeal, and supreme courts over the years.
Legal Note:This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.
Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.