This article examines a number of popular and free resources for conducting a preliminary patent search. However, it must be stressed that even if a prospective Patent Applicant conducts their own preliminary patent search to gain a better understanding of existing technologies that are related to an invention, a professional patent search (coupled with attorney review) should usually still be performed prior to filing a patent application.
Prior to contacting a patent attorney to obtain a professional patent search or for further information regarding the patentability of an invention, an Inventor may consider conducting their own preliminary patent search.
If an Inventor chooses to conduct their own preliminary patent search, it must be stressed that discovered or known prior art references which are “material to the patentability” of a patent application (namely the claims) must be disclosed to the USPTO. Additionally, an Inventor should contact a patent attorney as soon as practicable as various activities performed by the Inventor may foreclose their ability to obtain patent protection for an invention.
Resources for Conducting a Preliminary Prior Art/Patent Search
USPTO Public Search Facility
A preliminary patent search may be performed at the USPTO in Alexandria, VA. The systems available for public use at the USPTO are the same search tools that Patent Examiners utilize to search for prior art while examining patent applications. It should be noted that staff at the USPTO provide reference help during specified hours and formal patent search training sessions are conducted monthly. Further information regarding this resource is available at the USPTO Public Search Facility website.
Patent and Trademark Depository Library (PTDL)
If a visit to the public search facility of the USPTO is not possible, another resource for conducting a preliminary patent search is a PTDL. Every state has at least one PTDL (e.g., Michigan has three PTDL’s with locations in Ann Arbor, Detroit, and Big Rapids). Additionally, Librarians at PTDLs are trained to provide the public with assistance regarding the patent search process. Further information regarding this resource is available at the USPTO PTDL website.
PTDL Search | USPTO Online-Training Video
Prior to visiting a PTDL, the reader may want to review an online video tutorial offered by the USPTO which provides step-by-step guidance regarding all aspects of the patent search process at a PTDL: ”How to Conduct a Preliminary Patent Search: A Step by Step Strategy”
For the reader’s convenience, a slide from the aforementioned USPTO video which outlines the patent search process generally is reproduced hereafter.
“PATENT SEARCH OVERVIEW
- Brainstorm keywords to describe the invention.
- Use keywords to find initial class/subclass. Index to the U.S. Patent Classification
- Verify the relevancy of class/subclasses using the Classification Schedule.
- Confirm scope of subclass. Classification Definitions.
- Access complete patent documents and and published applications by classification.
- Review the claims, specifications and drawings of documents retrieved.
- Retrieve and review cited references and “Field of Classification Search”. ”
Each of the above steps are examined extensively in the aforementioned USPTO online video.
Patent Databases
In addition to the above resources, a preliminary patent search may be performed utilizing the information provided above in combination with one or more of the following online patent search resources:
Google Patent Search : Google provides an online patent/published patent application search resource. Similar to most other google products, this resource is quite impressive! For further information regarding this resource, the reader may want to review Google’s About Google Patentswebpage.
USPTO – Patent Search : This webpage includes links to two different USPTO databases: 1) patent database (located on left portion of the screen); and a 2) published patent application database (located on the right portion of the screen). A prospective searcher would want to search both of these databases. Further, links to other webpages which provide help for using the aforementioned resources (e.g., “PatFT Help Files”, “AppFT Help Files”, etc.) are included on the aforementioned webpage.
EPO Patent Search (Espacenet) : European Patent Office search database. Further information regarding this resource is available at the following Help webpage.
To generate a more complete preliminary patent search, a patent searcher should try to utilize as many of the above resources as possible.
Non-Patent Prior Art
In addition to the aforementioned patent search resources, various other resources should be reviewed during a preliminary patent search; including: industry publications (e.g., magazines, catalogs, etc.), search engines, relevant distribution channels (stores, distributors, etc.), etc.
Concluding Thoughts for Conducting a Preliminary Patent Search
- As an invention is made up of a number of discrete components/parts, compartmentalize each of the individual elements/features of the invention and generate a list noting each of said individual elements as a separate item of the list. Furthermore, for each individual item of the list, think of other terms (e.g., synonyms) which may be employed to describe said item. Write everything down during this keyword brainstorming process and continue to add new relevant terms which are discovered as the search continues.
- Become familiar with the various components of the U.S. Patent Classification System (e.g., Classification Index, Classification Schedule and Classification Definitions). Please note that each of the foregoing items are examined extensively in the aforementioned USPTO PTDL video.
- Contact a Patent Attorney as early as practicable if you are interested in obtaining patent protection for an invention to avoid loss of legal rights as indicated above.