Can’t look at everything
Patent searching isn’t an open-ended task. How should knowing that affect your approach? Budget dictates time, so your efforts need to be directed with purpose. This can be achieved through strategising and planning.
Ask yourself the following questions?
- Where should the references be indexed?
- Where are the references indexed?
- Where could the references be indexed
- How can I search the concepts/features without restricting by classification? Think AI searches and citations searches
- How can the corresponding IPC classification headings be searched effectively?
Efficiency is not defined by making the search smaller or looking at too many or too few references. It’s defined by using the allotted time to search in the right places and with the maximum likelihood of finding relevant publications. This is where planning and strategising helps.
Budget dictates time, so your efforts need to be directed with purpose
Not all references are predictably indexed
This needs to be figured into the above step. Great prior art can sometimes be indexed where you do not expect to find it. High level IPC searching can help, especially for picking up CN and JP references. Try the corresponding /00 heading and also sometimes just the top level IPC, such as G08B+.
Great prior art can sometimes be indexed where you do not expect to find it
Going the extra mile
Patent searching is not predictable, so time needs to be set aside to do something different to find those outlying/broad publications. Going the extra mile does not have to take up a lot of time. It can be as short as a half an hour to just try something different. Going the extra mile doesn’t have to mean wasting the budget. This can include:
- A tight targeted search in the full-text
- Searching for the benefits of the invention in the OBJ field (such as in Questel Orbit)
- Look for companies who operate in the area and conduct an assignee search
- Semantic searches
- Combine classifications
- For invalidity searches – dependent claim information is usually found by tight keywords searches in the full-text
- Infringement searches – look quickly in other broad areas by taking away the practice area or extending the practice area keywords to the full-text
- For infringement searches, do no limit to certain jurisdictions in order to find a key reference. Use that reference as a springboard to find other key publications
Going the extra mile doesn’t have to mean wasting the budget. It just means trying something different
Large headings
There are ways to get around searching large headings that cannot be searched in full. There are ways to get around this and to target relevant references:
- Combine a key classification with another classification that includes the characterising feature
- Do a tight search in the full-text
- Search key assignees
- Remove the characterising portion and look broadly at the product in general
- Combine with keywords, however be careful to not limit too much
Combine documents
In most cases it’s necessary to combine documents. This is especially true in invalidity searches. Search strategies need to be tailored to take this account. Strategies are different when looking for a knockout publication than when looking for a combination of documents. Start with a strategy for finding a knockout document and then expand from there and broaden out to fond combination documents.
Strategies are different when looking for a knockout publication than when looking for a combination of documents
Check your work
A patent search has real-world implications. It’s not just a process
It’s important to learn how to check your own work. This isn’t a negative or doubtful process. It’s a protection for yourself and your client. Find quick ways of checking your work at the end of a search so as to make sure nothing key has been missed.
A patent search has real-world implications. It’s not just a process. The purpose is to inform, help and aid your client in their work. The effort put in should match this expectation. Shape your search to match the expectation.
Shubana Baarsch | Baarsch IP | www.shubanabaarsch.com