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Prior Art Search: techniques

For those, wo have not read our previous post on patent search basics, we recommend doing that.

This time, I will try to provide more comprehensive description on patent search, including some tips which come from my experience working as a patent consultant and executive.

Reliability of your patent search

Even if you already have skills necessary performing a comprehensive and accurate patent search, unfortunately, you could not be 100% sure, that you will avoid the risk of receiving X's and Y's from the patent examiner after international search is performed. Why? First of all there are several objective reasons:

  • Publicly available patent databases do not include patent applications, which are filed within last 18 months. This is a standard term in all major patent offices at least. In some cases applicants may request earlier publication, though this is rather an exception than a rule;
  • The abstract is translated into english using non-common keywords;
  • The abstract, nor other part of the patent is translated into English (rare case nowadays);
  • Scientific or commercial articles/books exist describing the patent idea. Patent examiners at the biggest patent offices have access to additional databases of such material. Those databases are strictly for examiner user and the articles and books listed therein could be collected from a number of different scientific databases, publishing offices, etc.

Selecting the most relevant patents

In order to write a patent description, it is required to identify and describe the state-of-art. Usually I finish my searches with 10-20 relevant patents, then I include 3 to 5 of them into the description. It is a very important step since correctly identified state-of-art patents will give you many useful hints when drafting the claims of your patent application.

If you really succeed finding the closest inventions, then you can have a great opportunity to develop your application in the way that it is enough broad to cover various modifications and enough safe to pass the international search without any weak spots identified by the examiner. The healthier the ISR is, the stronger the patent will be in the court. Nevertheless, sometimes that is just a desired aim... In reality patent examiners at the big patent offices are controlled in the way that they should keep the percentage of "positive" and "negative" search report at some constant level (rumors say that it is around 20% vs. 80%). The percentage isn't really fictitious - it represents a long-term statistics. But sometimes (and quite often) the examiner will leave you many doubts if he fully understood the idea of your invention. But that is a off-topic now.

Judging about the most relevant state-of-art inventions consists of the following steps:

  1. Reading the patent abstract
  2. Analysing of the drawings
  3. Reading the claims
  4. Reading the ISR (international search report)

This sequence represents going deeper in the specific patent. In every step you might realise that the patent in question is not very relevant, then further steps are not necessary. But if you go steps 1, 2, 3 and still think this is relevant, you should give yourself two questions:

  • Is my invention idea still new?
  • What inventive step my invention comprises comparing to the patent I just found?

If you decide to proceed, then make the 4th step - open the ISR, if available. There you might find other relevant patents and literature indications, which could also become the state-of-art for your invention and might be used when drafting the patent description.

Basically that's it! If you have questions left to the patent search, please do not hesitate to ask them in the discussion below.