UNIT 2: DIFFERENT TYPES OF PATENT SEARCH; THE STRATEGIC USE OF PATENT INFORMATION
Learning outcomes
Upon successful conclusion of this Unit, learners shall be capable of:
- recognizing the rationale for executing the subsequent categories of patent information search and performing each of them in practice:
- state-of-the art searches ;
- novelty/patentability searches;
- validity searches;
- name searches ;
- technological activity searches ;
- freedom to operate and legal status searches
- outlining how patent documents are organized and what data can be located in the subsequent sections of a patent document:
- abstract
- claims
- classification
- description
- dates
- names
- debating how patent information may be analyzed for strategic application in licensing, mergers and acquisitions, research and development and human resource management.
Contents of Unit
2.1 What information is included in a patent document?
- Title;
- Abstract;
- Description, Drawings, Claims;
- Patent/ Publication/ Application/ Priority number(s);
- Dates;
- Classifications;
- Inventor, applicant, owner;
- Citations;
- Examiner/ Attorney Firms
- Country Information
- Patent Family;
2.2. Different types of patent search Introduction
2.3 State of the art searches
2.4 Novelty/patentability searches
2.5 Validity searches is this patent valid; can it be legally challenged?
2.6 Name searches what inventions has this individual or this company been involved in?
2.7 Technology activity searches – how has this technology developed over time and who has been involved in its development?
2.8 Freedom to operate searches; legal status searches – can I produce and/or commercialize this product in that country; has this patent been granted; is it in force?
2.9 The analysis of patent information for strategic use
2.9.1 Introduction
2.9.2 Licensing Strategy
2.9.3 Supporting mergers and acquisitions (M&A)
2.9.4 Guiding the management of research and development (R&D)
2.9.5 Human Resources Management
2.9.6 The Use of Creating Thinking, a qualitative analysis of patents
2.10 Suggestions for further reading
2.11 Self-Assessment Questions (SAQ)
2.1 What information is included in a patent document?
In Unit One, we briefly reviewed the various roles of a patent document. In this section, we will examine more closely—yet still concisely—the structure of a patent document and outline the key characteristics that make patent documents exceptionally valuable sources of technological information. Your Search Activities in Part 1 should further enhance your understanding of the type of information contained within patent documents.
For a patent document to ultimately be granted as a patent, it typically undergoes a thorough examination process initially by the inventor, and subsequently by a patent examiner who is skilled in the relevant technical field of the claimed invention, and often also reviewed by patent agents and legal professionals involved in the process. As a result, patent documents offer clear reliability advantages compared to other forms of technological literature. This is because they are carefully prepared and refined to comply with the strict requirements imposed by the patent system.
So, what are the key elements of a patent document?
a. Title:
A patent document includes a title that reflects the core subject matter of the invention for which protection is sought. Every document necessarily contains a title to enable quick identification or description of the invention in a limited number of words. This is especially useful for patent searchers when filtering through multiple related documents.
b. Abstract:
Patent documents generally contain an abstract that summarizes the invention in a concise manner. The abstract allows the reader to quickly grasp the general content of the document within a few minutes, which is significantly faster than reviewing the entire patent text. This is particularly beneficial for searchers, as it enables rapid understanding of the document without having to read the full 20–30 pages.
c. Description, Drawings, Claims:
Patent documents typically follow a relatively standardized structure that supports efficient information retrieval: the claims define the legal scope of the invention and the extent of patent protection; the description outlines the background of the invention (what was known before, i.e., the “prior art”) and explains the differences between existing technology and the invention, highlighting the novel contribution it makes—whether by advancing the technology or by providing new solutions to existing problems—in a detailed manner. In many cases, patent documents also include drawings that illustrate the invention and its various embodiments, which are generally reflected in the claims.
Technological information is disclosed through detailed descriptions of the invention in accordance with the requirements of applicable patent law, and by identifying the claimed novelty and inventive step in relation to the current state-of-the-art.
d. Patent/ Publication/ Application/ Priority number(s):
Patent documents contain multiple identification numbers; while the assignment of such numbers is standard practice across patent offices, the specific formats and codes may vary. Resources such as will assist in interpreting the codes displayed on the front page of patent documents. Typically, each patent application is assigned an application number at the time of filing; depending on jurisdictional practice, this number may remain the same or a different number may be assigned as the publication number upon the first publication of the document. Once the patent is granted, either a new number is issued or the existing publication/application number is modified—this practice varies between countries—and this identifier is referred to as the patent number. The earliest filing within a patent family, or the parent application, also serves as the priority number for subsequent filings.
These identifiers provide the most efficient and rapid method for locating a patent document; therefore, searchers strive to maintain accurate records of these numbers in order to quickly retrieve all related information in real time.
e. Dates:
Patent documents include several key dates (such as the filing date, priority date, and grant date), which enable conclusions to be drawn regarding the age of an invention and whether the subject matter remains under legal protection. If protection has expired, the invention may be used without authorization from the patent holder. In various types of searches, dates play an important role in assessing relevance to a particular case, filtering or excluding documents, or prioritizing among multiple records based on timing considerations.
f. Classifications:
Patent documents are assigned “classification symbols” that support the systematic retrieval and extraction of relevant technical information. For the purpose of organizing search files and conducting state-of-the-art searches, patent offices categorize documents according to their respective technical fields. Although several classification systems exist, the International Patent Classification (IPC) (http://web2.wipo.int/classifications/ipc/ipcpub/#refresh=page), established under the Strasbourg Agreement of 1971, is the most widely adopted system among major intellectual property offices. The IPC is administered by WIPO and is updated annually on January 1.
The Cooperative Patent Classification (CPC) system, introduced on January 1, 2013, is a joint system developed collaboratively by the EPO and the USPTO. It combines the most effective classification practices of both offices and represents the most detailed patent classification framework currently in use. The costs associated with processing, classifying, and maintaining patent documentation—particularly in alignment with IPC/CPC standards—are primarily borne by patent offices that publish large volumes of patent data. As a result, other users benefit from access to structured patent information without incurring the expense of building and maintaining their own classified collections. Patent documents within a given classification subgroup typically contain a dense concentration of highly specialized technical information within a defined technological domain. By searching within a relevant class, a searcher can identify related patent filings or previously known technologies. This approach leverages the expertise of patent examiners in categorizing documents. Classification-based searching also enables the discovery of relevant documents that may not be identified through other search strategies.
g. Inventor, Applicant, Owner:
Most patent documents indicate the names and locations of the inventor, the applicant, and the patentee (proprietor). In some cases, the inventor and the applicant may be the same entity. Typically, the applicant appoints a patent agent to handle the prosecution of the application, and this representative is often identified in the document. The provided information generally includes the legal address of at least the proprietor and/or the applicant. These details allow potential licensees to contact the relevant parties to determine the terms under which the technology may be licensed or transferred. For searchers, conducting searches based on the names of involved parties can be particularly effective.
h. Citations:
Most patent documents are published together with a search report that lists citation references identified during a documentary search carried out by the examiner to assess, in the first instance, the novelty of the claimed invention. These citations may include both patent and non-patent literature from various jurisdictions worldwide. Such referenced documents are valuable for understanding the state of the art and the technical challenges that existed prior to the invention in question.
i. Examiner/ Attorney Firms:
In a limited number of patent documents, the names of the patent examiner or the attorney firms (acting on behalf of the inventor or applicant) are also provided.
j. Country Information:
Patent, publication, or application numbers incorporate an indication of the country of filing, which helps identify the jurisdiction to which the patent document belongs.
k. Patent Family;
Patent applications are often filed in multiple countries in order to extend the geographical scope of protection. INPADOC maintains patent family data, which is accessible at https://www.epo.org/searching-for-patents/legal/inpadoc.html and is also available through the EPO Espacenet search system. This information is highly valuable for searchers when identifying priority documents, locating relevant prior art, evaluating patent value, and performing related analyses. The above points represent only a selection of the various sections of a patent document and their practical uses, particularly from the perspective of a patent searcher. These sections also serve many additional purposes for inventors, industry stakeholders, academic researchers, and patent offices.
Pre-Search Activity:
Action A:
Consider a subject you would like to search for, such as “catamaran”, “tree and shelter”, or “board games”. Select three of the databases mentioned above.
Action B: Enter, or copy and paste, one of the Internet addresses from the list provided above into your Internet browser.
Action C:
Input the keywords into a specific field. In this exercise, please identify where you can enter the suggested keywords. After entering the keywords, observe how many results you obtain.
Action D:
Examine how the results are organized. Look at how you can access more detailed information regarding each of the results. Are these similar to the manner in which information was displayed in the other databases?
Action E:
Now proceed to the second database you have selected and enter the same keywords. Do you notice variations in the method required to input the keywords? Do you observe differences in the quantity of results provided and how the information is presented?
Action F:
Execute the identical search for the third database you have chosen. For convenience, record your results in the simple grid provided below. The first one has been completed for you. As you can see, it was performed on the Chinese IP Office patent database.
The Secretariat of WIPO assumes no liability or responsibility with regard to the transformation or translation of the original content. World Intellectual Property Organization (WIPO) (2023). WIPO Patent Drafting Manual, Second edition. Geneva: WIPO. DOI: 10.34667/tind.44657