Common Mistakes that you make in Patent Searches

Common Mistakes that you make in your Patent Searches

Patenting activity is increasing at a staggering rate, and so is the patent information. A patent searcher’s role is to quickly and effectively find the matching prior art (both patent and non-patent literature) relevant to the invention under study. It is like finding a needle in a haystack. Let us look at some common mistakes in patent search a searcher may make when conducting prior art searches.

1. Not understanding the need for the search or Searching without considering the purpose

A searcher performs a patent search for various reasons. To determine the patentability of your invention, to ascertain the validity of a patent or invalidate a competitor’s patent. It might be for an FTO search, an infringement search, or a landscape search. Sometimes, the inventor or applicant is unsure why he needs to conduct a patent search. If there is any ambiguity, sort it out before you begin the search. Agree on what you search.

2. Not understanding the scope of the search or Mistakes in what to search for in different types of searches

You need to be aware of what a particular type of patent search entails. If a patent searcher is performing a patentability search, he/she cannot restrict the search to only patents or patents in few jurisdictions or only for the last 20 years. The reason being, any disclosure of the inventive concept in any publicly available work worldwide is critical for that assessment. In a clearance search, you do not need to search for non-patent literature, as the focus is on In-force and active patent applications. There is also a date and jurisdiction restriction for this type of search. Also, keep in mind whether to restrict a search by families or not. For example, every relevant patent family member should be searched and assessed in an FTO search. Whereas for a Landscape search, you can restrict to one member per family.

3. Not conducting proper background read-up of the invention

You may miss out on insights about the scope, function, applications of the invention under study if you skip the background reading about it. Search for the topic online in knowledge repositories, industry-specific websites, scientific journals, etc.

4. Not identifying all the subject features or Not construing what to find

A clear understanding of the scope of the invention is essential for an excellent search. If the invention features are unclear, this will result in a vague search. Demarcate invention into distinct, essential, and searchable features. It will help you in the proper formulation of search queries that cover all aspects of the invention. If in doubt about the features, double-check with the inventor.

5. Searching only in free patent databases

The coverage of the free databases or the search functionalities they offer do not rival what commercial patent databases such as PatSeer provide. Even if you are searching across multiple free databases, you would still run the risk of missing out on many relevant records. With so many inventions being published by non-English authorities such as China, Japan, and Korea, etc., the quality of translations can make a big impact on your search results. Further, if the search project is critical and budget and time aren’t an issue, it would be best to search in more than one commercial database. It would help account for any variation in data coverage, translations, data organisation, and retrieval of patents in different databases.

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