steps to conduct patent search

This post demonstrates few typical steps taken in prior art search, with some steps being more or less applicable for each of the different types of searches, and every step can be further divided if needed.

1) Read disclosure/description/patent document of interest carefully and determine its novelty.

2) Extract all keywords (use dictionaries like thesaurus for assistance).

3) Create Boolean search strings using various keyword combinations while avoiding syntax and typo errors for the database used (e.g., Total Patent, Orbit, Delphion, USPTO, Google, etc.). Also, take advantage of additional tools such as word stemming, wild cards, proximity, term weighting, relevancy, etc.

4) Determine the scope of documents to be searched depending on type of search being performed (e.g., US patents, US patent applications, European patent documents, PCT documents, non-patent literature, Japanese patents, etc.)

5) Include limitations as needed, e.g.: location within patent documents (title, abstract, claims), date criteria (invalidation search), patent country (FTO search)

6) Perform searches based on the steps above.

7) Analyze results gathered after (6) and determine their relevance.

8) Narrow or expand the scope of (3), (4), and (5) if required based on relevance of results and re-perform step 6 and 7. Otherwise, continue to next step

9) Collect and save all results in excel sheet OR other file — many databases allow searches and results to be saved for future review and performance.

10) Review all results on relevance to claim chart.

11) Determine most close hits in list, and save this collection.

12) Determine classification class/subclass(es) (US classification, IPC, ECLA, F-terms) to narrow down your search from (i) the most relevant patent documents and (ii) reviewing classification manual.

13) Search using these classifications using the current classification field and create Boolean search strings based on both classification and keywords.

14) Analyze results (as in step (7)).

15) Collect and save all results.

16) Create a list of the most relevant.

17) Use Espacenet to review all the patent documents in this list to review:

I. “Citing” references

II. “Cited” references

III. Sibling and parent patent documents

IV. For the most interesting references, also see the prosecution history to gather even more references

18) Repeat steps (15), (16), and (17) as needed.

Your suggestions for further improvements and refinements are welcomed.

1 comments:

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