Patent Search to Assess Legal Patentability
Patents are property rights granted to an inventor in order to exclude others from making, using, selling, or importing a particular invention. If you are applying for a patent, a patent search is not legally required, but it can be a crucial part of figuring out whether any prior patent will interfere with your ability to acquire a patent. A patent search also helps you avoid patent infringement, write your patent application, understand the competition, and learn more about the field in which your invention belongs.
Filing for a patent and acquiring a patent can be expensive. Before applying for a patent, you should conduct a search for “prior art,” which can save you money in the long run. Prior art is any existing body of knowledge relating to your invention, such as previous patents, publications, trade journal articles, public discussions, or sales anywhere in the world. This is the body of knowledge that accumulates before the date of an invention or more than one year before the first date of a patent application.
Your nearest Patent and Trademark Resource Center (PTRC) can help you find an expert to set up a search strategy, and the USPTO gives the public access to its collections of patents, trademarks, and other documents at its Search Facilities in Virginia. There are also many resources online.
Once you have filed your patent application, the United States Patent and Trademark Office (USPTO) will conduct its own patent search as part of the examination process. The examiner will review all public disclosures and prior art to make sure your invention is both novel and non-obvious, among other requirements.
How to Conduct a Patent Search
Patent searches require you to search different databases or specialized libraries to see whether there are any identical, similar, or partly similar inventions to your invention. A preliminary search on your own can save you money and be brought to an intellectual property attorney or agent.
In order to do a preliminary search, you need to understand the patent classification system, not just do a search on the internet. Patents are organized in databases based on common subject matter, which allows you to look at patents in the same field or class as your invention.
Since 2013, the USPTO has used the Cooperative Patent Classification (CPC) system to classify utility patents. The CPC was developed with the European Patent Office (EPO) to grant patents both in the U.S. and in Europe. To conduct a preliminary search for a utility patent, you can brainstorm terms that describe your invention to locate relevant Cooperative Patent Classifications (CPC) using the USPTO's Classification Text Search Tool. Next, you can verify their relevancy by using the CPC Classification Definition. You can then enter your search terms into the Patent Public Search database to review relevant patent documents. You can also conduct classification searching of non-U.S. patents on the EPO’s patent database.
The USPTO continues to use U.S. Patent Classification (USPC) for classifying design and plant patents. To conduct a preliminary search for a design or plant patent, you can brainstorm terms that describe your invention to locate the initial class or subclass in the Index to the U.S. Patent Classification System. Next, you can verify their relevancy by using U.S. Patent Classification Schedules and confirm the scope of the subclass by using the U.S. Patent Classification Definitions. You can retrieve the complete patent documents and published applications in the Patents Full-Text and Applications Full-Text databases.
You should also search non-patent literature, like magazines, trade paper articles, and online international patent documents. Just because nobody else is selling the invention does not mean that the product does not exist. This is why it can be important to retain a patent attorney or agent as soon as you reduce the idea for your invention to an enabled, workable form. If you need to disclose your idea to another person in order to reduce your idea to a workable form, you should only disclose it under a confidentiality agreement.
