Pivoting in Patent Searches

Rather than being a regression this can actually be viewed as a progression

Patent searching can be viewed as following a path, and at the end of the path hopefully the critical prior art awaits.  If only it were that simple.  Sometimes it is and sometimes it isn’t.  Many have heard of or experienced a career pivot. Rather than being a regression this can actually be viewed as a progression.  A change, yes, but that’s not necessarily a negative thing.  Sometimes change can be viewed as negative, but oftentimes it leads to something better.  Can pivoting be applied to patent searching principles?  Pivoting with a purpose can enhance the quality of the search and generate a lead to a reference of interest.  A patent search is dynamic and not static, so pivoting can enhance patent searching principles.

Reorient the direction of a search with the purpose of finding and building on what has gone before

A patent search is dynamic and not static, so pivoting can enhance patent searching principles

At the beginning of a patent search, I spend around 30 minutes preparing the ground and scouting.  This is a super quick scoping exercise, but gives a grounding and a feeling for the search.  What does this mean?  It provides useful information at the beginning of the search, which can include:

• What are the most obvious classification headings?  This will dictate the initial direction of the search.  Which classification heading covers the technology area and features, or most of the features?  Which classification headings cover other features?
• Who are the most prolific applicants and inventors?
• Is the critical prior art likely to be found among references that are machine translated, e.g. China and Japan?  For software and electronics searches, this has often proved true, but more and more there is great prior art to be found in these territories for many technology areas.  Will Japanese F-Terms need to be searched?
• Is there an overlap of technology areas?

Pivoting with a purpose can enhance the quality of the search

Getting a feel for the search is important as it sets the tone and direction of the search.  These first impressions are a good starting point and foundation for the search. This first scoping step itself could be viewed as a pivot point.

If everything is straightforward and the most obvious CPC/IPC have been located and searched, useful prior art may have been located following this path.  Pivoting could even be applied here for a more thorough search.  With the addition of citation searching and AI searches, even more references could be located.  This is an ideal search, but as we know it’s not always that easy.

Pivot points within a classification search

• Look at notes in the CPC classification system.
• Find other related CPC classifications.
• Look at classifications of references already found.
• Has your interpretation of the search been too literal?  Could you zoom out slightly and look at functions/applications rather than just parts/components? This could be applied when both inspecting and in constructing search queries.

What if the subject matter covers more than one technology area? Pivoting in the patent search can be applied.  Say for example, the disclosure outlines a device that contains a system component, either for measurement purposes or connectivity. Here is where a pivot is required. The most obvious classification for the device has not been ignored and has been searched, but also the feature that covers the system will not be ignored by pivoting.

Finding a new pool of references to search retrains the mind that thoroughly searching in one area alone does not provide the complete picture

Looking at the device classifications and the system/connectivity classifications is a standard step but it’s also a pivot.  Finding a new pool of references to search retrains the mind that thoroughly searching in one area alone does not provide the complete picture.  It can be refreshing to prove yourself wrong and find a new area to search and locate further interesting references.  I love searches that require a dive into the G classification areas, G01 (measuring) and the notorious G06Q (off-topic, but it’s one of my favourite places to search, especially for Fintech).  In some cases, the device could be buried in the measurement classifications and not in the device classification.  This is more likely to be a CN reference that is indexed in IPC only.  I’ve come across this many times.

For Fintech, software, communications and e-commerce, these types of searches require pivoting where numerous classifications are possible.  These searches really allow for the patent searching principles to come to the fore as predictable indexing does not always apply here.   Keywords may not always be helpful, and the headings themselves index too many references to be searched in full. They are also not very granular.

Pivoting refreshes, retrains and refocuses the mind. It prevents our minds from drawing incomplete or negative conclusions and narrowing the search.  Expansion is sometime needed. Realisations during a search should be a stopping point where you can learn, evaluate and then proceed or pivot.

Pivoting refreshes, retrains and refocuses the mind

Sticking to the core path of classifications is essential, but from here pivoting can be applied along the way. It can take the search in a new direction, or it can be a temporary diversion. During a CPC search, if a relevant reference is located, pivot and do a citation/applicant/inventor search.  A pivot could just be putting a place marker in your current search, whilst quickly following up on a lead and then returning.  A pivot can also reinforce that the correct area is being searched.

Realisations during a search should be a stopping point where you can learn, evaluate and then proceed or pivot

Of course, patent searches are not open-ended tasks. Applying just some extra steps, within time and budget can get your clients great results.