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.

Inventive Step

In many laws, the inventive step requirement means that a claimed invention shall not be obvious to a person skilled in the art at the time of the filing date (or, where applicable, priority date), or at the time the invention was made, in view of the prior art. In some countries, instead of the expression “obvious” (or “non-obvious”), expressions such as “inventions which could have been easily made” or “[an invention] having prominent substantive features and representing a notable progress” appear in national laws. Whatever term is used, the definition of “prior art” or “state of the art”, directly affects the determination of the inventive step. Where the scope of the prior art is limited, it is more likely that a certain claimed invention would be considered as involving an inventive step. Further, as for the novelty requirement, the interpretation and determination of the scope of the claimed invention is essential for the determination of the inventive step. 

National and regional authorities have developed various methodologies that can be applied when assessing inventive step, such as the “problem and solution”-approach used in the EPO, the “Graham test” in the United States of America and the “reasoning test” in Japan. Further, the interpretation of the term “inventive step”(“non-obviousness”) by national courts has developed into a body of case law in many countries. Since a vast majority of inventions are based on existing inventions, how to assess inventive step in an invention based on a combination of existing features has been extensively developed in a number of jurisdictions. Based on such case law, a number of patent offices publish examination guidelines, which are addressed primarily to the office’s examiners for consistent application of the law, but also to applicants and patent practitioners for a better understanding of office practices.64 Such examination guidelines typically contain the methodology, various factors to be taken into consideration (for example, problems to be solved by the invention, advantageous effects of the invention and secondary considerations such as commercial success and long-felt needs) and practical examples in various technical fields.

TRIPS Agreement

The TRIPS Agreement contains the national treatment principle and the most-favored-nation principle. The latter principle provides that any advantage, favor, privilege or immunity granted by a Member to the nationals of any other country (whether a Member or not) shall be accorded immediately and unconditionally to the nationals of all other Members, with certain specified exemptions. As is the case for national treatment, procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights are exempted from this principle.

Article 7 of the TRIPS Agreement in conjunction with the preamble of the Agreement sets out the objectives of the Agreement: the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. Article 8 provides “principles” which recognize the rights of Members to adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement. It also recognizes that appropriate measures, provided that they are consistent with the Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

Compared with the treaties adopted under the auspices of WIPO,one of the main particularities of the TRIPS Agreement is the dispute settlement system established under the WTO Agreement. Articles XXII and XXIII of GATT 1994 (except subparagraph 1(b) and 1(c) of Article XXIII), as elaborated and applied by the WTO Understanding on Rules and Procedures Governing the Settlement of Disputes, apply to consultations and the settlement of disputes under the TRIPS Agreement. This means that benefits enjoyed in another trade area may be withdrawn in retaliation for the violation of the TRIPS Agreement (so-called cross-retaliation).

Patent Thickets

In general the term “patent thicket” describes a situation where a product involves a web of patents that are owned by a number of different patentees so that a company which wants to commercialize the product is required to “clear” all the patents involved. This phenomenon is well-known in complex technologies, such as information and communication technologies, and in technical fields where a number of companies compete at the same level so that a fragmentation of patent ownership occurs. A changing research environment, increasing complexity and sophistication of technology and certain patenting strategies may have an influence on patent thickets.

Although there is no generally agreed objective definition of the term “patent thicket”, it suggests negative effects due to a “thicket” of patents, in particular, in the sense that third parties may be blocked from using a patented technology. The potential problems addressed are centered on the excessive transaction cost. Some suggest that cross-licensing may solve the vertical R&D and hold-up problems. By entering a cross licensing agreement, companies may secure freedom to operate. On the other hand, there is a risk that the problem is exacerbated because each competing company tries to build a bigger patent portfolio than competitors in order to create a better bargaining power to negotiate cross licenses. Another solution consists of patent pools to reduce a transaction cost, although some raise concerns about their compatibility with competition law.