Patents vs Trade Secrets: Choosing the right path for intellectual property protection
In the complex landscape of IP, the choice between patents and trade secrets depends on various factors such as…
There are two main reasons to carry out a patent search:
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.
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:
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.
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:
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.
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:
When considering freedom-to-operate:
If you would like advice or need help with your patent searching strategy, please get in touch to speak to one of our attorneys.