Learn a systematic and effective approach to searching patents.
Patent research is a vital component of successful inventing. In searching the patents, you'll find out not only if your invention is patentable, but how to improve your invention so that it can be a success in the market.
We're going teach you how to do your own initial patent searching so that you can decide if it's worth it to invest further time and money on your invention and so that you can refine your invention to increase your likelihood of success.
If you want to bring your invention to market, you're going to have to spend money. There's just no way around it. The key is spending money wisely, not "getting broke quick." Doing your initial searching will save you thousands of dollars and increase your chances of inventing something truly unique, patentable, and commercially viable.
You can contact us directly through email at firstname.lastname@example.org. We also want to encourage you to start conversations. You can use the discussion tool in Udemy to start discussions either in the specific lectures or on the course page. It’s very often the case that a general question that you have is something that everybody is wondering and it something that we need to explain better. So please start conversations to spark further learning!
Patents, unlike other forms of information, need to be searched according to their own organizational system. If you just Google them, you're going to find that you get a very shallow view of what's going on in your area of invention. Throughout the course were going to talk a lot about how to use patent classification to further your searches and get better information.
The checklist of items you'll need for your patent search is not very long! You'll need a computer with an Internet connection and a spreadsheet program, like Excel. If you do not have Microsoft Office, there are several very good free office suites that will run the spreadsheet just the same. We'll discuss the spreadsheet in much greater detail in the section on search tools.
Part of being a savvy inventor is looking the part, being able to talk the talk. We'll look at a few common terms that you'll hear a lot in this course and from any other professionals who work with.
In this lecture we look at a couple of extremely common terms in patent research. The first one is Prior Art, which is what we call any information that was made available to the public before and invention's application date that would contradict its claim to originality. In searching for prior art, we're focusing on patents because they are the most common form of prior art.
In prior art searching, patents and published Patent applications are equal because we care most about what is described in them, rather than what is claimed. (Claims will be an important part of your life as an inventor, but in prior art searching we have to focus on the written specification and drawings.) They're all just disclosures with fixed dates on them. Because we treat them equal (or nearly equal), we refer to both issued patents and published patent applications as "references."
Two useful shorthand terms in prior art searching our 102 and 103. These are both types of rejections that patent applications can receive from the Patent Office. A 102 rejection is a rejection based on a single piece of prior art. That is, the patent examiner will state that your claimed invention is not patentable because there is one or more references that have all of the claimed elements of the invention. (As an aside, I'll just tell you that the manner in which you overcome such rejections is to revise your claims, usually making them narrower and more specific.)
The 103 rejection is based on putting multiple references together to negate all of the claimed features in your invention. This is a more complicated and nuanced type of rejection. We care about it mainly because there are times when one or more features in a reference will be very similar to those in the invention were searching. When we see that, we have to be mindful that there might be other references out there that could be paired with this in an obvious way to lead to a 103 rejection.
Patent documents, especially the more recent ones, are very well organized. Once you know where to look on the document, you can quickly find the information you are looking for and make decisions faster about whether or not you want to keep a reference.
Being very cautious, risk-averse people, we could go on and on about all of the different caveats and limitations of patent searching. Just know that although patent research is vital to furthering your invention, it is also not foolproof. Good, thorough patent research can help you lessen your risks of infringing on a patent or spending lots of resources on a non-patentable invention. However, it's never going to be a sure thing. But then again, the same thing can be said for entrepreneurship in general!
You should note that as far as patent applications go, the US Patent and Trademark Office almost always rejects applications on the first examination. Good research can help that first rejection be less of a blow, easier to overcome.
We move from talking about the general terms and concepts of patent research and look at the tools will be using throughout our search.
These tools are free for the most part, but you will need an Internet connection to do your searching.
We'll be spending most of our search time using Google Patents. Although Google is best known for its easy search engine, you can also use it in a more organized way to do your patent research.
Since 2006 Google has been organizing and cataloging patents from around the world, in conjunction with the various government patent offices. Currently there are patents and patent applications from the United States, Europe, China, Germany, Canada, along with the international filings.
At the end of the course, we will be looking at international searching, but for now we're going to focus on US patent searching, because the US remains the largest market for patents.
The core principle of patent research is: find relevant patent classifications, and when you find them search them either completely or as thoroughly as possible. This is the key difference between basic Internet searching and patent research. We use classification. A lot.
In this video I discuss some of the organizational features of patent classification. However I do not go into greater detail about how classification works or how patents are classified. This is because, as searchers, we do not have to worry about how the system works. Were going to use searching to find the classifications that we want to search further. So we're never going to "deep dive" into the inner workings of patent classifications.
There are many other search tools out there beyond Google. Some of them including Free Patents Online (FPOL for short) and the US Patent and Trademark Office have important features that Google does not currently offer. For example, FPOL happens to have a very simple URL structure for all of the references in its database. So in our spreadsheet, we have an automatic hyperlink generator that takes you to the reference's page at FPOL. That way, you can always come back to a reference that you find interesting.
FPOL also has a very good search algorithm and Boolean search language. If you don't mind learning their Boolean search tools, you can get a lot out of the service. We do not like that it doesn't display pictures along with text. That's to fatiguing for a long search.
The US PTO has virtually no advantages, except for the database is the most current. Also, the USPTO maintains several other important collections of data, including the Patent Application Information Retrieval (PAIR) system and the assignment database. We'll look at both of these toward the end of the course.
A quick overview of the various features of some popular search services.
Though it's not a perfect solution, using a well formatted spreadsheet for your search will get you a much better set of data. In the next two videos we discuss the spreadsheet that we have designed for this course. It has several important functions that will make it easier for you to complete your search and trust your search results.
The advanced spreadsheet has many features that make it easy to do thorough patent research.
We've added a new revision of the patent searching spreadsheet with some bug fixes.
For our early searching we are going to execute several simple keyword searches using keywords from the various elements of our invention. We will mark promising references for safekeeping, and we will copy down there Cooperative Patent Classification (CPC) codes on the references sheet in our spreadsheet. The spreadsheet will automatically tabulate the parent classes and subclasses so that we will know where to look when we start our classification-based search.
Patent classification has several levels to it. Before we look at the very specific subclass level, we're going to do some classification based searching on the parent level. We're going to do this because we want to see if there are any semi-hidden subclasses that may not have come up in keyword searching but are contained in the relevant parent classes. Parent classifications can be very large, sometimes containing tens of thousands of patents and patent applications. So we will search the parent classes in combination with keywords.
After searching using the parent classifications, it's time to look at the more specific subclasses. For this search, we will still limit our subclasses using keywords. However, when you're doing your own searching, we recommend as often as possible searching the best subclasses completely. That's how you'll be as certain as possible that you covered the necessary ground.
After compiling a nice collection of close references, we're going to review them and decide which ones are the closest to our invention.
Patent research is about being thorough. It's about covering ground. This can be sort of maddening, because it's hard to tell when you've covered enough ground to say that you're done and you can move on.
Our rule of thumb for deciding when a search is done is by how many subclasses you've covered. Depending on the search, you should search through the top 2 to 5 subclasses. And depending on the size of those subclasses, you should either be looking at them completely or in combination with keywords.
A good indicator of when you're done is if you start to see the same references over and over, especially you're seeing them in very disparate search results.
Of course, it's almost impossible to guarantee that you've searched everything you need to search, but at some point you're going to reach diminishing returns, where it no longer makes good sense to keep extending your search.
In patent research, we have a saying: often the inventing does not start until the search is done. That means that it's very often the case that your invention in its original embodiment is not inventive enough to get a patent. However, in light of the patents you see in your search, you can figure out what elements may be missing. It's in making that inventive step that you will achieve both patentability and possibly market success.
For StopSmoke, we will attempt to add a few simple features that might get us around the prior art.
Beyond your patent research, there are resources you can use to get more in-depth information about patents and applications.
Patents will often have their assignees (their owners) listed on the cover sheet. However, this information is never updated after the patent issues. If you want to track the chain of ownership and see if there is a new owner about patent or patent application, you have to use the USPTO assignment database.
Another area of interest is the prosecution history for patents and patent applications. It can be very valuable to understand the prosecution histories of references in your are area, especially if you are interested in understanding how the Patent Office may examine your own application.
Inventors Learning Center is a cooperative effort between registered patent practitioners and professional researchers. Over the years, through our interactions with inventors, we've learned where inventors need the most help. Our goal is to help the independent inventor and small business person quickly get "up the curve" on those topics that are most important to a successful invention.
Registered Patent Agent Kevin Prince teaches courses having to do with patent application writing, patents in general, and patent drawings. Kevin has over 15 years of experience working with inventors to obtain patents, now numbering over 1,400 granted patents in the United States. He's the author of the book The Art of the Patent, featuring some of the best patent drawings created in the last 200 years of patent history in the US.
Professional patent researchers Stewart and Pat Walsh have conducted over 5,500 professional patent searches for attorneys and product developers. Together the two brothers have developed a patent research system that is used by multiple practitioners and an attorney docketing system that keeps track of thousands of patent applications working their way through the US Patent & Trademark Office.