Freedom To Operate Searching Guidelines

Is it quite common and important practice to conduct FTO search before launch a new product in market as it tells about the competitors in the market and also tells from whom license for the technology has to be taken to sell that product. 

There are few things that need to be considered while conducting an FTO search.

• You should know in which country/region company is about to launch the product as the patent is jurisdiction specific you need to focus on only countries where company is willing to sell the product.
• All in-force and alive patents need to be analyzed. Remember lapsed patents are equivalent to NPL they have no rights what so ever.
• You are not supposed to search for Non-Patent literature.
• All patent applications which are pending in respective authorities need to be analyzed, make sure they are not abandoned in office action
• All WIPO applications which have respective authority in designated state need to be analyzed.
• All the features related to product should be mapped using claims only (You can add supporting text for claims)

Search String types

Broad Search Strings

• Result sets are in wide range.
• Objective is to catch as many prior art as possible
• When narrow strings are not providing desired results.
   
• Most Helpful When: 
• Researcher is not familiar with the subtleties and nuances of a patent 
• Researchers need to learn broader themes (classifications), keywords, and ideas for the patent study

    

Narrow Searches

• To obtain very focused research results
• The main Goal is expanding on specific areas 
• When domain has too much of documents   

• Most Helpful When: 
• You already have most relevant keywords, themes (classifications), and ideas   
• You have identified the specific areas where more detail is needed

   

Combination Logic

Combination of both narrow and broad search strings are very helpful in finding relevant prior art. There are various methods of making combination logic.

• broad theme and narrow keywords.
• narrow keywords and broad keywords.
• broad keywords and narrow search scope (eg. searching only in title)
• narrow keywords and broad scope

NOTE: 

1. always remember date criteria.
2. start with the software and databases your are comfortable.
3. Go for new databases which you haven't tried yet but could yield something. 

 

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.

Patent Translations for non english patents

There is always a problem with translations in the hunt of most relevant prior art. I have dealt with the same on numerous occasions. though there are some tips which can help to get some good machine translation free of cost, as most of the time searcher only needs an idea of how invention works.

JAPAN

As japan is a major patent authority it is often required that Japanese patents can be machine translated though PAJ provides good and reliable machine translation but it only works for patents published after 1992. Before it there is not much patent translation available even subscription based patent searching databases only offer translation for Japanese patents after 1992.

Note: In case the Japanese patent is filed in WIPO you can obtain its translation via patent scope using google translator OR microsoft translator.

KOREA

Korean patents make things worse as the translation from Google translator is not very good. though in case patent is published after 2006 thomson innovation gives a good patent translation through its in house machine translation.

Note: In case Korean patent is filed in WIPO, you can obtain its translation via patent scope using KIPRIS translation which otherwise would cost 40$.

China 

chinese patent translation is new thing to patent searchers but as the filing is increasing very rapidly in chinese patent office. Chinese translations are also very vital to patent searching, all subscription based patent search database provide acceptable translation for Chinese patents, but for better one you can use SIPO translator. which gives better translation than Google OR Microsoft.

if any buddy has some other advises please leave comments. thanks

Google's updated Prior Art Search

Recently Google has added a new service to its patent search service "Prior art search".



the blue button left to read this patent.

This tool tries to find relevant prior art to the subject patent. It is a good value addition by google though it is still in its early stages and results are not very good but it is likely to get better. There is the screen shot that how it works.

There is also a addition by google to its patent search engine. now EU patents can also be searched on google, hope google makes a excellent free prior art search database.

Some patent tools you must know

 Patent Library

Patent Library allows users to search by patent number and get OCR'ed PDFs of patent 

documents.

Searching prior art with the help of Inventor, assignee and Classification

Searching through the relevant keywords is safest approach for locating relevant prior art as there is a very high chance of finding prior art, but it is not the best approach. There are chances that some of the prior art may have been missed because of the different patent language or short description.

There are some other strategies that a good patent searcher should work out on. some of them are to use Inventors, assignees and Classifications, first of all shortlist all the closest patents you have found till date and then find their inventors, assignees and classifications (IPC, US, F terms etc). You can add some of the assignees by simply searching for the companies which are active in that field. 

Use this search engine for searching relevant US classes and use TACSY for searching relevant IPC classes. Once you have the list of Inventors, Assignees and Classifications you are ready to search.

PS: Make at-least one query which is only based on classification, and don't forget to check for the NPL that those inventors have published. You might find something interesting.

Novel approach to locate prior art

Locating close prior art provides a critical edge in patent litigation or licensing, by documenting that the patent in question should not have been granted due to anticipatory (102) or obviousness (103) art. However, the prior art defense is contingent upon successfully locating such art. as most law firms have discovered, there is a wide range of outcomes when a prior art search is commissioned. this is dramatically evident when a Joint defense Group commissions 3 searches and compares the results, only to find that while they purport to cover the same materials, the outcomes are dramatically different.

The challenge of assessing the quality of a search is difficult, since attorneys have no way of knowing what critical findings were missed. consequently, they tend to rely on proxies to gauge the quality of a search, e.g. the number of findings uncovered, the total number of databases reviewed, length of the search report, etc. However, there is no evidence that any of these factors correlate with search integrity.

SOME WORST MISTAKES IN PATENT SEARCHING

Occasionally we all mess up. When millions of dollars of patent lawsuits could be hanging in the air depending on your patent search, it’s not an ideal time to commit an error and “score on your own net.”
Still, mistakes are part of life, and it’s best to be able to recognize areas in which you might be most prone to making mistakes. Are you lax when communicating with your client (internal or external)? 

Identifying areas for improvement can lead to a more considerate course of action, which can cut down on mistakes. Double check that email or have a co-worker do it (and help them in return!).

why use patent classification instead of just keyword based searching?

Advantages of using IPC in comparison to only using keyword searching:

• Language independent
• Terminology / ”jargon” independent
• Standardized application to documents
• Concept search
• Available for (old) patent documents where no full text of claims / description is available
• allows for more complete search results than pure text searching
• Classification adds information value to patent documents
• Combination of classification-based and text searching gives best results