In general, focus is essential. It helps with time management, reaching goals, accuracy and reducing distractions. As patent professional, we can all identify with the above. Deadlines bring time constraints. We have the goal of finding references relating to the search. There is a need for accurately inspecting references and keeping our concentration. So, we can all ask, where is my focus during a patent search? Should this focus morph during the different layers of the search? Do I usually search without focus?
Should focus morph during the different layers of the search?
Patentability Searches
Patentability searches are generally completed in a short amount of time. A lot of ground has to be covered to ensure relevant references are located. There are several layers of focus to a patentability search.
- For the duration of the search, the focus should be kept on the elements of the disclosure. Make a list of these elements and this can reduce spending a lot of time on distracting references that are not relevant.
- For the initial part of the search, focus on finding all elements in the TI/AB/CLMS of a reference. This can be done by restricting to keywords only or keyword/IPC combinations.
- Next, move the focus to full-text searching. The technology area elements of the disclosure can be kept for searching in the TI/AB/CLMS, however consider searching more finer detailed elements in the full-text. These can be tight searches using proximity operators.
- Keep the focus on the technology area of the disclosure.
- Images can sometimes be a distraction. Elements can be disclosed in writing in the full-text of different embodiments.
- Don’t solely put your focus on highlights. Certain terms you may not have anticipated may describe the very element you are looking for.
- Citation searches can retrieve a lot of results in certain technology areas. Try not to do blanket citation searches of all references. Select the closest references and do citation searches for those.
Images can sometimes be a distraction. Elements can be disclosed in writing in the full-text of different embodiments.
Invalidity searches
Invalidity searches are very interesting to put together. There are so many layers that can be explored to find the types of references that can be useful in an opposition procedure. Here are some suggestions for focus during the different layers of the search:
- Initially, focus on the technology area of the patent claim. Try to find a reference that discloses all elements, be that through TI/AB/CLMS searching or full-text.
- The next layer would be to focus on finding the closest prior art. This reference may not disclose the inventive step/characteristic part of the claim but it does contain most of the other elements. This reference can be used as a starting point for the combination of documents. This reference should be in the technology area of the claim of the patent.
- Next, focus on finding a reference that discloses the characterising portion of the claim, the inventive step. Ideally, this should be in the technology area but try to think of analogous technology areas that can be explored.
- If a knockout reference cannot be located, focus on finding combinations of documents
- Focus can be lost, if you are not sure what types of documents you are looking for. Make a wish list of what the ideal knockout reference, closest prior art and inventive step references would contain. Keep your focus there and adapt the search strategy to focus on these goals.
- In some cases, it can be beneficial to focus on searching JP, CN, especially for software/computing/electronics inventions. DE utility models are great for searching for mechanical inventions.
There are so many layers that can be explored to find the types of references that can be useful in an opposition procedure.
Keeping focus does not mean losing your creativity or intuition. Incorporate these into your focus frameworks to find those outlying or difficult to find references.
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