Basics of Conducting a Patentability Search

In order to perform a patentability search the first step is to determine exactly what are the possible claimed components of the invention that are to be searched. If a patent specification hasn’t already been prepared then a candidate patent claim is usually constructed from the invention disclosure.

For example, a patent claim for an ordinary patentability search shovel might be as follows:

A shovel comprising:
an elongated handle; and
a shovel head;
wherein said shovel head is attached to said elongated handle.

In this example the features of the claim are “elongated handle”, “shovel head”, and “attachment of the shovel head to the elongated handle”; arranged as detailed in the claim.

In a patentability search, documents are sought that are publicly available and which, alone or in combination, teaches about all of the features set out in the claims. These documents may be published patents and patent applications but they can also include publicly available journals, magazines, websites, brochures, books and any other material capable of describing the invention.

The search typically starts by considering the key features and developing a list of keywords, i.e. synonyms for the elements of the claim that are used in the particular technical area of the invention. Apart from keyword searching the search strategy should also make use of classification searching. Then more detailed search strategies could be constructed and implemented in specialized patent or non-patent databases. Apart from searching patent databases, documents in academic and trade collections are also relevant and should be searched if possible. Sometimes internet searches can also help and sometimes direct hits are found at this preliminary stage which clearly demonstrates that the invention is already known so that further searching is unnecessary.

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