Patent prosecution is a challenging process, but technology helps to remove many of the obstacles that are commonly faced. In the patent search phase of the patent process, patent professionals commonly struggle to search broadly enough to obtain the results they need, to reduce their patent search results to only those that are relevant, and to read through each patent search result to determine whether or not they are important. Modern patent search tools reduce patent search issues and leave users with only the patent search results they are after.
Searching with the appropriate geographic breadth is a twofold problem: conduct a patent search that is too broad and you will wind up with an unmanageable amount of search results; conduct a prior art search that is too narrow and you could miss an important patent reference and be blind to those risks that lurk outside your search boundaries. Fortunately, identifying how broadly you should search is rarely the problem—the type of patent search you conduct will help identify the proper geographic regions to include in your search. For example:
- Prior art searches are searches for prior art references that could affect the patentability of an invention. Under United States patent law, references anywhere in the world can impact patentability, and an all-encompassing global patent search may be the most appropriate option.
- Freedom-to-operate searches, on the other hand, are designed to answer whether or not patent rights are being infringed. If you are only worried about your ability to make, use or sell something in the United States without infringing a patent, then your search needs only to include patents granted by the United States Patent and Trademark Office (USPTO).
Most of the difficulty comes from the practicality of searching as broadly as you need to. While most patent authorities, like the USPTO, have their own patent search engines, those search engines only help access patent documents that were filed with the applicable patent authority. A worldwide search is commonly accomplished by cobbling search results from separate patent authority search engines. Alternatively, some patent authorities are strategically omitted from a search due to time constraints. Fortunately, there is a simple alternative to this roundabout search method. Advanced patent search tools, like the LexisNexis TotalPatent One® patent search platform, enable users to search broadly from a single source, and grant access to documents from over 100 worldwide patent authorities with the click of a mouse.
Patent document volume
A single patent search query can lead to thousands of search results. Dealing with the sheer volume of patent search results can be problematic. High-volume search results are often due to the use of keywords that are applicable to many different types of inventions (e.g., “rotary technology” is used in both power tools and toothbrushes). Other times, patent search results contain many types of patent documents that are irrelevant to the search. For example, a freedom-to-operate search only concerns finding patents that could be infringed. Therefore, search results should exclude any expired patents or abandoned patent applications, but should contain live patents and pending patent applications. Users of the TotalPatent One® patent search platform have the ability to use several different filter types, such as filtering by CPC code or patent status, to quickly eliminate irrelevant search results.
Patent document applicability
Once document volume is whittled down to a reasonable amount, you may still be left with an abundance of patent documents that need to be reviewed for their applicability to your search objectives. In the context of a prior art search, you will need to identify any documents that could impact the novelty or nonobviousness of your invention. When working on a freedom-to-operate search, the question is whether your actions (if you are a company or an individual) or your client’s actions (if you are a patent practitioner) will be an infringement on any of the patent documents found throughout your search. TotalPatent One provides users with a preview of each patent search result that contains invention summaries, patent drawing previews and other pertinent information so they can quickly determine the applicability of each individual search result.
Patent prosecution is full of challenges, but patent searches do not need to be one of them. TotalPatent One is a comprehensive patent search tool that simplifies patent searches by offering advanced features to allow users the ability to identify relevant patent documents with ease.
Learn more about TotalPatent One patent search tools here.
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