There are two main reasons to carry out a patent search:

1. Patentability – can I get a patent for my invention?
2. Freedom-to-operate will I infringe another patent if I make, sell, import or keep a product or carry out a process?

An effective patent searching strategy can save you time and money, whether this be in relation to obtaining your own patent protection or establishing whether you infringe someone else’s patent.

Patent searching is complex and is often best left to your patent attorney or a specialist patent searcher.  However, we understand that some inventors like to carry out their own preliminary patent searching as an initial screen and possibly to save costs.

Here are five tips to help your patent searching strategy.

1. Where to look

One of the most well-known and comprehensive database of patents worldwide is Espacenet.  Espacenet is a free online service for searching over 140 million patent documents from around the world.  Espacenet was developed by the European Patent Office together with the member states of the European Patent Organisation.

The ‘Advanced search’ function allows the searcher to search different fields, the most popular of which are:

• Keyword in the title, claims or abstract – these parts of the patent application will include many key words relating to the invention and so this provides a useful searching tool.
• Applicant name – if you are aware of a company or person who owns a patent or who has applied for a patent.

2. How to search for keywords

More often than not, you will not be aware of a specific company who may own a relevant patent and so the best searching function in this case will be a keyword search.

Keyword searches tend to be the easiest way to search for relevant patent documents in absence of knowing specific detail on the patent document you are trying to locate.

When carrying out a keyword search, it is best to use the general form of phrases and words, rather than industry specific jargon and trade marks, which are less likely to be included in a patent text, and even less so in a patent abstract or title.

As an example, you may want to identify patent documents relating to coffee cups.  While a patent keyword search for ‘coffee cups’ will provide some results, more generic terms such as ‘beverage’ and ‘container’ will likely be used in patent documents relating to coffee cups.  As such, using the more generic terms for phrases and words (and then following up with more specific keywords)  will be a more effective search strategy.

3. Consider the scope of the search

As explained above, patent search databases contain millions of documents.  It is not effective (and often a waste of time) to trawl through hundreds, if not thousands, of documents.

It is far more effective to narrow the scope of the search as this will likely provide a more manageable number of documents while not missing documents which may be relevant to your search.

How to limit the scope of a search often depends on the purpose of the search:

• Freedom-to-operate
  • Limit your search to patent documents filed in the last 20 years because patents have a total term of 20 years so any granted patent older than this will have expired and not be a concern for patent infringement,
  • Limit your search to patents filed in countries where you will be working the invention as patents are territorial rights. For example, a UK patent can be enforced in the UK only.  So, if you are considering your freedom-to-operate only in the UK, then you only need to look for patents and applications which have been published with the country codes GB (UK national patent/application), EP (European patent/application) or WO (international/PCT patent application).  For reference, a European or international patent application may ultimately result in a UK patent.
• Patentability – If you are considering patentability, documents of any age can affect patentability and so the net often needs to be cast much wider than with freedom-to-operate searches.

4. Cited patent documents

During examination of a patent application, the national patent office of the country where the patent application was filed will carry out a patent search and issue a search report.  The search report effectively links the searched patent application to each of the patent documents in the search report.  Thus, if you find a patent document which looks to be relevant, find its search report compiled by the patent office and then you can quickly review the patent documents identified by the patent office as being relevant.

5. Understand the results

Why are you doing the search?  Patentability?  Freedom-to-operate?

The reason for the search determines how you would view the results.  The following considerations are useful.

When considering patentability:

• does the document disclose your invention in its entirety?
• are there any aspects of your invention which are not disclosed in a single document?
• are the aspects of your invention which are not disclosed likely to be considered inventive? i.e., does your invention relate to non-obvious modifications of the invention described in the document identified in your search?

When considering freedom-to-operate:

• is the patent in force? It may have been granted and in force at one stage, but is that still the case?  Check national patent registers, or ask your attorney!
• the patent looks relevant, but is it? Do the claims of the granted patent cover your invention?  Your patent attorney will be the best person to ask to help you answer this question.

If you would like advice or need help with your patent searching strategy, please get in touch to speak to one of our attorneys.

Resource: Watch our patent searching webinar to learn more