Part of a series teaching you how to reduce patenting costs.
OK. You have your idea. You may be an individual inventor, an engineer building a product or an office manager faced with an invention disclosure. You know that initial charges for drafting and filing a patent cost from between 3.5k to 10k pounds (5k to 15k dollars). What do you do?
The answer is some background research in the form of searching. If you find a published document that describes your idea, you have saved yourself the drafting and filing costs. You may have also found a potential partner or competitor.
In an ideal world you would get a search department of a patent attorney firm to perform a search for you. A thorough search and analysis may cost around 1.5-2k pounds (2-3k dollars). However, we do not always live in an ideal world: you may then wish to perform your own search.
Doing Your Own Search: Where to Start?
The obvious answer is Google. Here are some tips:
- Write down a number of keywords that describe your idea or invention. About 10 should do. Perform searches on pertinent combinations of three of these keywords. About 5 or 6 separate searches as a start.
- Limit the time you follow links and examine search results. About 10 minutes or 15 minutes for each search should do.
- Record, record, record. A simple way to do this is a table in a word processor or spreadsheet. Record the search string (e.g. the search keywords) together with the three most relevant results. You can copy and paste the resulting links directly into the table.
- Iterate. Use the results of the first set of 5 or 6 searches to modify your sets of keywords and search strings. Is there another term that keeps appearing in your most relevant results? Add that to your search string. Can you think of more generic terms or synonyms for your 10 or so keywords? Try them instead. Think in functional terms. For example, “message” instead of “IP packet”, “clothing” instead of “shirt”, “bias” instead of “spring”, “rotate” instead of “pivot” etc.. Add a divider to your results table (e.g. page break / line), perform and record another 5 or 6 searches with these new keywords.
- Use image results (“Images” option in Google) as a quick way to find relevant results. If you idea is related to a physical structure you can quickly scan the images displayed for that structure. Copy and paste relevant images, as well as the associated link, into your results table.
Doing Your Own Search: Next Steps, Patent Publications!
Has your Google research returned anything that appears to cover your idea? (“Knock out your idea” in patent slang.)
- If the answer is a resounding “yes” then it is going to be extremely difficult to obtain a patent. But hey, you’re not going to throw away thousands of pounds or dollars on a new patent application.
- You may wish to think about modifications that are not covered by the search results.
- If you are looking to proceed with commercialising an idea, you may wish to check that the search results are not associated with patented technologies. For example, check the website in the search result for the word “patent” (Ctrl-F) or make a note of the company name for the searching described below.
- Print to PDF the webpage/image/text that appears to describe your idea. Save this somewhere safe. If other try to patent the same idea you may be able to use this result to invalidate their patent and avoid paying royalties.
- If the answer is “no” then things may be promising. It is time to search another database! Patents this time. The best place for this is a website called “EspaceNet” provided by the European Patent Office.
- There are three search fields in the “Advanced Search” that are useful: “Keyword(s) in title or abstract”; “Applicant(s)”; and “Inventor(s)”.
- Use your most relevant search strings from your Google searching in the “Keyword(s) in title or abstract” search box. Record your results – I prefer to save the results page as a PDF.
- If more than 100 results are returned try to narrow down your search. You can either add more search terms or look to see which classifications are applied to the most relevant results. The classifications are a code such as “H03M1/12”. You may find your relevant results all contain “H03” – hence, when repeating your search type “H03” in the “International Patent Classification” search box.
You can also look to see whether any inventors or companies keep appearing in the results. These may be your competitors. Try searching for patent publications from these inventors or companies (the company name goes in the “Applicant(s)” search box). Beware the applicant will be a legal entity – this may differ from the trading name; for example, if your idea relates to washing detergent a relevant applicant name may be “Unilever” as opposed to “Persil” or “Surf” (which are brand names). Also search using inventors’ surnames, as first names are often omitted, or given in the form of initials only.
- For each relevant result (click on the hyperlink provided in the result list), work forward through citing documents (“View list of citing documents” hyperlink below “Priority Number(s)”) and backwards through cited documents (For EP publications these are listed in the “Cited Document(s)” row).
- Set yourself 30 minutes of iterating to try to find 3 to 5 relevant patent publication results. Make a note of the numbers and download the PDF publications (click on Original Document after clicking on the hyperlinked search result).
- Espacenet covers many countries worldwide, including US patent publications, those relating to most European countries as well as those published by the European Patent Office, and a number of Asian countries including Japan, South Korea and China.
Doing Your Own Search: Results
By now you should have documented any Google and patent publication results. Take about 30 minutes to talk through the results – preferably a conversation with the idea originator and someone of managerial level (e.g. someone responsible for funding a patent application).
If nothing has come up, the idea likely has scope to be patented. You may provide your results to a patent attorney or professional searcher to proceed with an application. The results will help focus the drafting process, possibly saving you money by reducing the time needed. If the results are good, you may save yourself a thousand pounds or so of searching costs.
If something has come up, do not despair! It may help to focus your inventive efforts by stimulating modifications and improvements which may be new and inventive. You have also performed an initial IP audit: the results may be used to influence freedom to operate searches. For example, if your idea forms part of a product, it may be that the idea has already been patented and one or more patents are in force and cover your product. You can then look to obtain a license to avoid the prospect of litigation or redesign your product to avoid infringement.
Performing your own search is relatively easy. It may take an hour or two of someone’s time, but apart from that it is free. It provides an initial filter on ideas, making sure you only spend money on what is more likely to be valuable.