How To Conduct Patent Search

[ “HOW TO” Series No. 1 ] HOW TO CONDUCT PATENT SEARCH

PATENT SEARCH Patent Search is the process by which patented and non-patented information are located and examined to determine relevance and similarity to a given patent or proposed invention.

Patent Search is the process of searching for specific subject(s) that can be found on patent documents by using various search retrieval tools. The search retrieval tools can be used to access and retrieve technical and legal information embodied in the patent documents. Patent documents include issued patents, published pending applications, PCT-filed applications, and registered utility models (UM) and industrial designs (ID).

SEARCH TOOLS The following are search retrieval tools that can be used in conducting patent search: 1. Online databases. Patent searchers can surf the net and search for granted patents and patent applications all over the world via the worldwide web. Free Patent Databases: IP Philippines [www.ipophil.gov.ph], USPTO [www.uspto.gov], EPO [ep.espacenet.com], JPO [www.jpo.go.jp], WIPO [www.wipo.int], CIPO [cipo.gc.ca], etc. Commercial Patent Databases: Delphion [www.delphion.com],Dialog [www.dialog.com], WIPS [www.wipsglobal.com], etc. 2.

CD-ROM Patent Databases. The CD-ROM patent databases are large collections of patent information stored in compact discs that are available in IP Phil Library.

3.

IPC Search Files. The IPC search files are bibliographic data of patents chronologically filed according to the international classification or IPC. This search tool is available in IP Phil Library.

4.

Inventor Index. The inventor index is a search tool that contains alphabetically arranged names of inventors and their corresponding works. This search tool is available in IP Phil Library.

5.

Assignee Files. The assignee files contain alphabetically arranged names of patent assignees or companies under which the patents have been granted or applied for. This search tool is available in IP Phil Library.

TYPES OF PATENT SEARCH 1.

State-of-the-art Search. This kind of search is carried out to determine the general state of the art for the solution of a given technical problem as background information for R & D activities and in order to know what patent publications already exist in the field of the research activity.

2.

Novelty / Prior-art Search. The aim of the search is to discover relevant prior art to establish the novelty of an invention.

3.

Patentability or Validity Search. This search is made to locate documents relevant to the determination not only of novelty but also of other criteria of patentability.

D:\2007\1.0_2007-myDocs\1.0 PROJECTS 2007\How Tos\HowTo-PatentSearch\PATENT SEARCH brochure_type v6.doc 2/28/2007, 10/30/2008, V1

4.

Name Search. This search is useful for locating information about published patent documents involving specific companies or individuals, as applicants, assignees, patentees or inventors.

5.

Technological Activity Search. This search is useful for identifying companies and/or inventors who are active in a specific field of technology or locating countries in which a certain technology is being patented.

6.

Infringement Search. The objective this search is to locate patents and published patent applications which might be infringed on by a given industrial activity.

7.

Patent Family Searches. This kind of search is carried out to identify a member of a “patent family.” Patent family searches are used in order to: o

Find the countries in which a given patent application has been filed (if published);

o

Find a “patent family member” that is written in a desired language;

o

Obtain a list of prior art documents or “References Cited”;

o

Estimate the importance of the invention (by number of patent documents relating to the same invention and being published in different countries or by industrial property organizations).

8.

Legal Status Search. A search for this type of investigation is made to obtain information on the validity (status) of a patent or a published patent application, on a given date, under the applicable patent legislation in one or more countries.

9.

Equivalent Search. This type of search is carried out to determine the equivalent Philippine patent of an application or a patent already granted outside the Philippines.

PATENT SEARCH STRATEGY 1.

2.

Determine the subject to be searched and the type of search to be carried out. o

The subject of search may include processes, products, apparatus or materials (or the way these are used or applied).

o

Know the important features or embodiment of the application by taking note of the relevant keywords. The keywords are user-generated search terms that are expected to be found in the text or content of the relevant document.

o

For pharmaceutical compound, it is important to know the structural formula or the chemical name. If the generic name is given, refer to the Merck Index to get the structural formula as well as the granted foreign patents relating to the compound.

Determine the corresponding international classification. o

For most of the search types, the IPC search file is the primary search tool used by patent searchers.

3. After determining the correct classification, keywords and or the structural formula, manual or electronic search may now be conducted. MANUAL SEARCH a. Scan through the IPC search files with the corresponding class(es). o The inventor index and assignee search files may also be used depending on the available data. D:\2007\1.0_2007-myDocs\1.0 PROJECTS 2007\How Tos\HowTo-PatentSearch\PATENT SEARCH brochure_type v6.doc 2/28/2007, 10/30/2008, V1

b. Take note of the patents that may be relevant or may correspond to the subject mater of search. c. Locate the full text patent document(s) in the IPO library. COMPUTER-ASSISTED SEARCH a. Open the database and type in the IPC or keyword(s) onto the appropriate textbox and click the command button to commence the electronic search process. The IPC or keyword(s) may be used in combination with other search criteria. b. Browse the files corresponding to the search results. c. Download or save the files that are relevant to the subject matter of search. d. When dealing with locally published patents, locate the full text patent document(s) in the IPO library. 4.

Analyze and examine the patent documents if they are relevant and similar to the subject of search.

5.

Summarize findings.

D:\2007\1.0_2007-myDocs\1.0 PROJECTS 2007\How Tos\HowTo-PatentSearch\PATENT SEARCH brochure_type v6.doc 2/28/2007, 10/30/2008, V1