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Patent Search

How to perform a patent search before filing a patent application

Prior to preparing and filing either a provisional or non-provisional patent application, it is recommended (but not required) to perform patent research – which should include some form of patentability search or patent clearance study.

Patent SearchPut simply, a patent search typically is the first step in the process of seeking patent protection. First, a patent search can help assess whether time and resources should be sent in pursuing a patent application. Second, a patent search helps identify a point of novelty (ie, the inventive step) that may be a focus of showcasing to the United States Patent & Trademark Office how your invention is unique and different compared to those in a specific technology sector. In essence, this functions to help direct and hone a patent application before drafting. Third, a patent search provides a basis to gauge the potential scope of proposed patent claims in light of prior art.

While it is highly recommended that such search or study be performed by an experienced professional such as a patent attorney, patent agent, or alternatively a patent clearance vendor – many inventors and startups choose to go it alone without the aide of a professional. For those that do (and arguably at their own risk), here are viable means of searching appropriate depositories available in the Miami area:

1. Search One of Florida’s Three Patent & Trademark Depositories: While largely unused, both the Miami-Dade Public Library and the Broward County Main Library (Fort Lauderdale) both house two of Florida’s three patent and trademark depositories. These afford a physical search tool to reviewing potentially applicable patents that may relate to an inventor’s proposed invention, as well as provide background with regard to the state of the technology. Moreover, such depository searches allow the inventor to understand and use the common lexicon regarding a particular subject matter.

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2. Use the USPTO Search Engine: The United States Patent & Trademark Office maintains an on-line search engine for both issued United States Patents as well as for printed patent publications. Moreover, the search engine offered by the USPTO also allows for searching based upon a patent number, terms, assignee, inventor name, or any terms found within the specification or claims. One of the drawbacks of the USPTO search engine is that it is cumbersome in reviewing the drawings (nor is there a clear PDF downloadable of a utility or design patent application). However, the search engine is a great way to perform a quick on-line search based upon a variety of topics.

3. The Google Patents Search Engine: In December 2006, search engine leader Google launched its patent search engine. It is estimated the Google has placed some eight million patents in this search capable database and made them OCR search readable. Likewise, in August 2012, Google further added the ability to search European patent references through its search engine. Unlike the USPTO search engine, the more advanced Google Patents search engine readily allows for download of a complete patent, including any and all drawings and graphics.

4. The WIPO PatentScope Search Tool: The World Intellectual Property Organization (WIPO) maintains a comprehensive database of Patent Cooperation Treaty (PCT) filings which is searchable through its PatentScope search tool. This search tool allows several fields to be searched based upon PCT applications filed through WIPO – including but not limited to the applicant names, full text, ID/number, and front page information. The WIPO search allows for a good supplement of review in addition to a United States Search (either via Google Patents, a search of the USPTO database, or related depository) as well a search of the European Patent Office database.

5. European Patent Search / EspaceNet: While the European Patent Office is largely decentralized having offices throughout Europe (including Vienna, Berlin, and Brussels) – the EPO does maintain three separate search tools (www.EPO.org/searching.html). The first relates to searching issues EPO registrations while the second relates to searching published applications pending before the EPO. The third system, is a comprehensive search tool called EspaceNet which allows searchers to review not only EPO registrations by those found in a variety of foreign jurisdictions.

6. The Pat2PDF Website: One of our favorite tools to retrieve patent information is www.Pat2PDF.org. This free service allows any user to enter a patent number, patent application number, or patent serial number, which will retrieve the underlying issued patent or alternatively a published patent application. This is a simple tool to use one a searcher has identified certain potentially relevant patent references.

7. The PriorSmart Website: Another publicly available website that allows for ready searching of U.S. and some international on-line patent depositories is www.PriorSmart.com. This service allows for searches abased upon inventor name, assignee name, claims, abstract and title.

8. LexisNexis: While this search does require a fee (and likewise does require a user ID and password to use the system), the LexisNexis system allows for permutations of different word terms to be searched and analyzed which possess a broader search result which is often more comprehensive then a rigid term search.

Again, while all eight of these search systems allows users the ability to search a variety of criteria to perform a patent analysis – a search is only as good as the person performing it. Moreover, the ability to compare references found based upon a search to a proposed invention also requires a set of specific skills and abilities.

For a free estimate regarding how to conduct a patentability clearance search – call 305-374-8303 to talk to one of our skilled Miami patent attorneys.