By David French
This is part one of a two part series. Part two will be published next week.
I recently had an extended discussion with someone which resulted in the conclusion that there is more to patenting than just getting patents. We started with a discussion of the business value of a patent and then addressed the business value of patenting. Here is the concept.
If you are going to start the patenting process, it is absolutely essential that you do some searching. Searching is essential because you can only patent an aspect of your own idea that is new. There is no point in filing a patent application if you cannot identify a feature that is new. So a patent novelty search is about searching for bad news: defining the boundaries of the forbidden territory that you cannot claim because it is delimited by the “Prior Art Wall.”
My conversational partner had previously taken coaching from me on how to do his own patent searching. He remarked how amazed he was at the amount of valuable information he learned when he carried out a patent search for the first time. Reviewing the efforts of other inventors helped him clarify the problem he was addressing — he got to see his own initiatives in the context of the alternate solutions that others had proposed. He observed that prior inventors are, in a sense, available to act as consultants to coach you in respect of your own invention. He experienced his first dose of competitive intelligence in the field of his invention.
I liked hearing this because it is a “good news” aspect of the patenting exercise. Whether or not a prefiling patent novelty search establishes that the road is clear for you to attempt to obtain patent rights, there is tremendous value to be obtained by just carrying out the search.
For novelty purposes, blocking prior art can arise anywhere, from any source. However, we search at the patent office amongst issued patents and pending applications because the records there are highly indexed. Here is a link to the main website at the U.S. Patent and Trademark Office – U.S. PTO. And here is a link to the best page to start searching using key words. Note that this is the page for searching issued patents. There is another page for searching pending applications.
Searching at the U.S. PTO is preferred because the records there are full text as of 1976. Searches at the Canadian Patent Office can only address the words used in the Abstract or the Claims associated with a patent or application. To start searching at the U.S. PTO, simply choose two words that are closely related to your idea and enter them as search Term 1 and Term 2. The fields for the two search terms can be left at the default “All Fields” for now.
Let us assume you have an improved garden rake. In such a case, two words to enter might be “rake” and “handle.” We can defer limiting the search to documents including the word “garden” since you always patent structure and there may be rakes that have a similar structure used for other applications. Entering these two terms gives you the following result:
Results of search in U.S. patent collection db for rake and handle: 3,199 patents
This is far too many documents to look at. But beneath the above report and above the list of the first 50 references is a box that starts with “Refine search.” In that box we can add to the initial search terms to produce the search string “rake AND handle and (claw or hook).” I am assuming that these are all features of our inventive rake concept. Entering these terms gives results as follows:
Results of search in U.S. patent collection db for ((rake and handle) and (claw or hook)): 485 patents
This is still too many documents to look at. However, looking down the list of the first 50 hits we see that U.S. patent 7,987,658 has the title, “Multi-purpose garden tool with pivotable gardening head.” Clicking on this reference to open it, we see an Abstract which describes in a complicated way a garden tool (note that it does so without using the word “garden”). Do not spend too long reading the Abstract. A quick activation of the link “Images” takes us to a page where we can see the drawings if we have a TIF reader (if you do not have a TIF reader, you can download one for free by clicking on the red “Help” link in the yellow bar above the black space where the pictures should be on the “Images” page).
From the drawings associated with this patent we see that it really does relate to a garden rake. Locating this reference enables us to switch to “classification searching.”
Conclusion of part 1
This article is divided into two parts to give readers time to reflect on the valuable learning opportunities provided in each of the parts. The object is to demonstrate that searching at the patent office is a doable procedure that is available to anyone who takes the time to learn the relatively simple steps and protocols.
A major benefit of searching is the mind-broadening effect of seeing how others have addressed a problem, which can help you make better inventions!
Looking forward to seeing you in part 2.
David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit www.SecondCounsel.com.