2.2 Different types of patent search
Introduction
Initially, an invention originates from a concept; its specifics or legal consequences have yet to be determined. It is plausible that other inventors have conceived similar ideas, if not the identical idea. Prior to investing significant time and capital into your concept, it is prudent practice to examine what other inventors have accomplished in that domain. You might be employed in an R&D enterprise seeking to enhance an invention or modify it, or you might be mandated by your employer to conduct a search for products that technically resolve a specific issue. In nearly all scenarios, you would gain from understanding what others have achieved in the precise field in which you are operating before committing your resources and time.
Alternatively, your firm might need to license in technology necessary for its products. In this instance as well, you will need to execute a patent search to ascertain whether any patents exist for that technology and who the legal proprietors of the patents are. Or you might be a patent examiner in a Patent Office obligated by law to conduct a search to assess whether an invention is novel and non-obvious (essential prerequisites for a patent to be granted). The aforementioned represent examples of various rationales for conducting a patent search; and in practice, each distinct category of search necessitates a slightly different methodology.
Generally, searches executed by individuals unfamiliar with the patent system are unlikely to be as comprehensive as those performed by patent search professionals or patent examiners, who will possess specialized expertise as well as access to fee-based services. That said, different facets of patent information can be highly beneficial to various users and sectors, including inventors, researchers, scientists, engineers, attorneys, universities, industry, commerce, and government. The subsequent categories of search are detailed below:
2.3 State-of-the-art searches what solutions exist for my technical problem?
2.4 Novelty/patentability searches can I secure a patent for my invention?
2.5 Validity searches is this patent valid; can it be legally contested?
2.6 Name searches what inventions has this individual or this company been engaged in?
2.7 Technology activity searches how has this technology evolved over time and who has participated in its development?
2.8 Freedom to operate searches; legal status searches can I manufacture and/or commercialize this product in that country; has this patent been granted; is it in force?
Each type of search is accompanied by one or more search exercises to assist you in becoming acquainted with the techniques involved. Note: Several of these categories of searches are further explored in Unit 6, sections 6.7 and 6.8.
Attention student searchers!
There is no substitute for practical experience! To assist you in performing the search activities in the subsequent paragraphs, it is recommended that you print out the Unit so that you can follow the activities concurrently while using the internet. Furthermore, for those new to patent searching, it is advisable that each search activity be conducted at least three times, to acquire familiarity with the features of the databases searched.
Please take note of the tips provided within the search databases themselves.
2.3 State of the art searches
A state-of-the-art search is conducted to evaluate the level of advancement within a specific technical domain; its purpose is to identify what solutions to a particular technical problem are discoverable in patent documents.
Research and development:
It is prudent to execute or commission a state-of-the-art search prior to initiating any research and development program, or at a suitable phase during the program. The objective is to prevent the wastage of time, effort, and resources on addressing issues that have already been resolved. Millions of dollars are squandered annually on research that has already been disclosed in the patent literature.
Licensing and acquisition:
It is also advisable to undertake a state of the art search when considering licensing in or investing in a specific technology. A search to ascertain what alternative solutions exist in that technical sector how they have evolved over time and whether they remain under patent protection can offer valuable insights and leverage during negotiations and finalizing agreements.
2.3.1 Search Activity – Electricity generation
The goal of this exercise is to acquire the skills to locate a specific invention and analogous inventions that could resolve a given technical problem utilizing Espacenet, which is one of numerous free databases. Espacenet is hosted by the European Patent Office and contains over 80 million patent documents.
Assume you are a manager of a branch of a company whose operations involve solar and wind powered electric generators. In this scenario, you might wish to conduct a State-of-the-Art patent search using the terms solar, power, electric, and generators, followed by another search substituting the word ‘solar’ with ‘wind’. If you aim to identify the most appropriate technology and its availability through licensing or technology transfer, you would gain from performing this type of search to find relevant patent documents, and subsequently verifying whether there are patents in force in the jurisdiction where you intend to operate.
Enter the phrase ‘solar AND power AND electric AND generators’ into the second box down in Espacenet at espacenet.com/quickSearch You retrieved more than 360 documents. You can click on any patent document featured on the site to access more detailed information. The initial page that opens upon selecting a document displays bibliographic data, including an abstract of the invention, details about the inventor(s), classification information, and more.
Summary of Search Activity
After locating these documents through a refined keyword search, you can begin exploring the historical development of inventions within the solar energy field. Providing a thorough summary of the technological background in this area will not only impress your employer but, more importantly, guide you toward identifying the existing state‑of‑the‑art technology. Are these inventions still protected by active patents? If they are not, you can utilize the underlying idea without infringing any rights. Conversely, if the desired invention remains under patent protection, can you identify the patent‑holding company to explore potential licensing opportunities? During licensing negotiations, could certain information strengthen your bargaining position?
State‑of‑the‑art searches followed by in‑depth analysis can yield comprehensive overviews of prior art, referred to as Patent Landscape Reports, for example see wipo.int/patentscope.
2.4 Novelty or Patentability Searches
When an inventor has created a new concept and intends to apply for patent protection, conducting a patentability search is a prudent first step. If the search uncovers earlier documents indicating that the invention lacks novelty or is too similar to existing knowledge (i.e., lacks an inventive step), proceeding with a patent application would likely be an inefficient use of time and resources.
Thorough preparation before performing the search is essential to define precisely what aspects should be examined. You need to assess where the novelty and inventive step in your invention truly lie. In straightforward cases, the search direction may be immediately apparent.
However, if you have developed a complete machine such as a printer the inventive contributions might reside in various parts: the paper feed mechanism, toner cartridge design, the method of loading the cartridge, the scanner, or even a combination of these elements. Alternatively, the innovation might involve how the printer performs additional functions, like photocopying or faxing, or the way it communicates with computers.
In cases involving such complex machinery, multiple inventive concepts may exist, requiring more than one separate search effort. Conversely, if the improvement concerns only one specific component such as the paper feed mechanism then the search focus is clear.
Consider carefully which features constitute the core of the invention and which are optional. If you are conducting the search on behalf of another person, it is essential to discuss and clarify these points with them. It is also important to determine whether the invention is strictly confined to the field of printers or if it could be applied in other industries. For example, a paper feed mechanism might also have applications in other contexts. All these factors will influence how the search strategy is designed.
2.4.1 Search Activity - Plough
Let's assume you've developed a farming implement designed for cultivating both hard and soft soil. This tool is the result of generations of ancestral knowledge, enhanced by your own engineering expertise. You aim to manufacture this tool uniformly, perhaps even on a commercial scale, recognizing a demand for advanced farming techniques in your country. At this juncture, you can access any patent database and input the search term 'farming tool'. However, you might discover that 'farming tool' is a broad descriptor encompassing all implements used in farming, not exclusively ploughs. Thus, 'farming' could be too general. Nevertheless, as this is your initial foray into patent information searching, let's proceed with a search under 'farming tools'.
Kindly search for "farming tool" on WIPO's Patentscope® site at: wipo.int/patentscope/search
Note: The search engine may interpret the phrase "farming tool" as either "farming" OR "tool" or as "farming" AND "tool". Patentscope interprets it as "farming" AND "tool", yielding 166 results. This is a relatively small number of documents to review when assessing the novelty of your invention.
Try searching for "farming OR tool". How many results did you obtain this time?
Additionally, try clicking on the blue bar labeled 'Analysis', located approximately halfway down the screen. This provides a breakdown of the documents you have found.
Once you have the results, you can click on the number associated with any of the identified patent documents and then select 'Bibliographic data, description, claims, drawings etc.' to examine the documents in greater detail.
Upon reviewing the documents, you'll likely observe that many are not pertinent to your specific needs, indicating that the term 'farming' is too broad. Can you identify an alternative term that better describes your invention? Would it be more effective to use the word 'plough' itself?
Searching for "plough" yields over 11,000 results. Since "plough" can also refer to snow ploughs and other types not used for soil cultivation, let's refine the search to "soil plough".
This narrows the results to a more manageable approximately 1,000 hits.
However, we must also consider potential alternative spellings, such as "plow". Try searching for "soil plow" and note the number of results you receive.
Subsequently, we would need to further refine the search by incorporating terms that specifically describe the unique features of the plough you have developed.
Summary of Search Activity
The majority of the documents feature drawings of the invention. Reviewing these drawings is an effective method for determining the relevance of a document to your invention. Bibliographic information offers a concise summary of substantial details concerning the patent application.
Keyword searches are inherently broad, as similar words and terminology are often used to denote different types of objects in everyday language. As you gain familiarity with patent databases, you will recognize the utility of the International Patent Classification System (IPC), a globally standardized system that serves as a highly effective search tool (which we will explore further in Unit 3). The search conducted in Search Activity 2.4.1 provides a solid foundation for identifying soil ploughs. It has furnished you with a selection of patent numbers and, more crucially, insights into the types of additional searches required. It also enables you to compare your invention against the soil ploughs documented in the retrieved results.
It is important to note that this does not constitute an exhaustive patent search; rather, it is designed to guide your initial thought process when determining the potential novelty of your invention. It should be emphasized that the Patentscope database examined is not the sole resource available. Patent searchers are, in fact, encouraged to utilize a variety of databases throughout their search process. Testing the system's behavior with simple keyword searches before proceeding with a comprehensive search is highly recommended. This approach helps in understanding the potential findings and refines your strategy for preparing a more effective patent search. Subsequent search activities will utilize different databases.
2.4.2 Search Activity – Power Tools
Your company operates in the power tool manufacturing sector, producing items such as drills. An engineer has proposed integrating a level (also known as a spirit level or bubble level) into these tools to enhance user accuracy during alignment. She seeks to determine the patentability of this concept.
In the context of a state-of-the-art search, the approach would involve a broad inquiry into all types of power tools that incorporate levels, utilizing various terminology for levels. However, for a novelty/patentability search, we can commence with a focused search targeting the specific product. If we find existing patents for this precise product, it suffices to demonstrate that the idea is not patentable.
Conduct a search in Patentscope for "drill spirit level". The search engine will look for these terms in combination, yielding relevant results. For instance, a German document, DE202004012187, includes an abstract stating: 'A hand-held electric drill has an outer case in which a spirit level is incorporated. The spirit level is incorporated at a T-shaped location on the side of and within the housing.'
This finding demonstrates that the concept is not new, thereby eliminating the need to consider its obviousness. However, it is possible the engineer has devised a unique method for integrating the level into the drill. Such an innovation might be novel and patentable, warranting further investigation.
How Might the Question of Obviousness Arise?
Suppose our search revealed no patent documents describing a power drill with an incorporated level, but we did find a document detailing a manual drill with a similar feature. While the invention would be considered new, a Patent Office might contend that the idea is obvious. The reasoning would be that given the existence of a manual drill with a level, applying this concept to a power drill would not require significant inventive ingenuity.
You may find it beneficial to perform the aforementioned search in Espacenet to compare the results obtained.
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