Monday, November 3, 2014
Patent Search Methodology Example
The book “Make it Big, Crossing the Entrepreneur’s Gap” covers intellectual property in detail. In order to file a patent entrepreneurs have to know their idea is unique as compared to prior art. Prior art includes (1) patents and patent applications that are publicly available, (2) patent applications not publicly available,
(3) other ideas in the public domain such as academic and technical literature, and (4) non-public art stored in other inventors' private design documentation or lab / design books. In the process of invention, entrepreneurial designers conduct a prior art searches to make sure their creations are unique. When a patent is submitted to the USPTO the inventor must submit prior art findings as part of the filing. Prior art (1) and (3) are accessible, (2) and (4) are not. Public domain searches in literature can be gathered by reading and researching relevant literature. Online, academic, and library databases are the best option for this.
Many ideas that have been patented have never been commercialized therefore entrepreneurs spend a fair amount of time researching prior art before developing a product and filing a patent. The activity helps shed light on the idea's commercial potential, what has been done before, and helps avoid inadvertently infringing on another patent.
Use the USPTO website for researching public domain patents and applications. It is free to use at: www.uspto.gov. The main issue with conducting searches is finding out how to appropriately scope the invention area. Doing a search on a basic term can yield hundreds of patents. The best way to scope the invention is to know the appropriate patent class.
Patent classifications indicate the subject to which the invention relates and related indexing gives further details of the contents. The U.S. classification system identifies over 450 classes with more than 150,000 subclasses. Every U.S. patent has at least one mandatory classification, and may optionally include one or more discretionary classifications. A patent examiner will assign a classification to a patent application at the most detailed level which is applicable to its contents. Knowing the classifications of patents that appear relevant helps define the search scope. For example, a camping lunch kit is class 206 “special receptacle or package” subclass 541 “camp or lunch type.” A sleeping bag is class 2 “apparel” subclass 69.5 “bag type.” The classification index can be reviewed on the USPTO website.
Once a designer knows the patent class, they can use keywords describing the invention and the class to scope the search. This yields more relevant and targeted results. Once a more relevant list is retrieved, the entrepreneur can review each sequentially and note the patent or application number and title of those that appear close to the invention of pursuit. Copy the entire abstract and patent information (number, inventors, etc.) into a working document so you can refer to it later. Much of the patent information is available online to read in HTML format. For those patents that appear related to the invention, go ahead and buy the patent from the USPTO and they are delivered in PDF format. These can be purchased online from the USPTO. The nice thing about having the PDF is that they will have all the drawings, figures, and complete layout of the patent as the inventors originally filed it. With those in hand the entrepreneurial designer can review these prior art in detail and define the edges of prior art and how the new invention does not infringe.
This is a great process and having an organized methodical approach provides the best coverage particularly for filing a provisional patent which can be done without a patent attorney’s support. There are a number of advantages of filing a provisional patent as discussed in the book “Make it Big, Crossing the Entrepreneur’s Gap.” When transitioning a provisional to a utility or filing a full utility from the start, an attorney will appreciate the entrepreneur’s prior art work and will also help reduce the overall cost of submitting a full utility patent.
This patent search method can also be expanded to search related classes and other classes that are referenced in patents that appear highly relevant. Combined (class, related class, and prior art class) provides broad coverage and increases the entrepreneurial designer’s confidence that their idea is truly unique.
"I’ve used this methodology on a number of patent filings and also in the process of conducting due diligence on intellectual property for venture investment purposes," says Marc Theeuwes, former Venture Capitalist and now Consulting Associate Professor at Stanford University. "Conducting prior art searches is always helpful to entrepreneurs and investors to make sure ideas are truly novel, and not infringing on others."
We hope this methodology is helpful. Prior art searches are always important but even more so if a large part of the entrepreneurial venture’s value relies on the uniqueness of its intellectual property.