Patent Search Basics - Why Do A Patent Search?

Patent Search Basics - Why do a
patent search?
Dear Everyone,

Thank you for your first assignment submissions.
We now proceed to the basics of searching, particularly patent searching.

PART 01. Why search and why do a "patent search"?

I presume that all of you have taken the GEW601 - Basic Intellectual Property (IP)
course already.
As you recall, Patents is just one of the IP assets that an inventor/creator like you can
generate or create. Other IP assets include Utility Models, Copyrights, Trademarks,
Trade Secrets, Plant Varieties, Geographic Indications, Industrial Designs, etc. We
search because we are looking or trying to find something.
But why do a patent search then?
Well, the ultimate or ideal goal of your research work is to generate inventions that are
patentable!
And the three basic requirements for patentability are novelty, non-obviousness,
and industrial applicability (commercial value). Hence, we conduct patent searches to find
out if your invention (as a result of your research work) is patentable or satisfies all three
requirements.
The first thing that your panel committee will look for in your research proposal is novelty. This
is why you are required to conduct lots of review of related literatures (RRLs) to find out the
research problem, the current solutions, state of the art, and the gaps in the field. After you've
identified your research problem and come up with a technical solution to address the problem or
gaps, the next thing you need to do is find out if your technical solution (can be a process or a
product) is novel or not. This is where patent search comes in.
Patent Search is not like your ordinary searching operation (using any web search engine). With
web searches, the results that you get for the IMPORTANT DETAILS of the TECHNICAL
SOLUTION are usually SHALLOW. The information that you get in your RRLs, probably
through searching journal papers, books and other references only give you a GENERAL
DESCRIPTION of the technical solution or invention. What we need are the IMPORTANT
DETAILS of the current technical solutions available. These IMPORTANT DETAILS of the
technical solution are found in what we call Patent Documents. The way how these details are
worded in patent documents are, if I may say, a little bit cryptic, shrouded in mystery and
secrecy, and embellished with legal jargon that no ordinary person could decipher directly or
search for it using common web search engines.
Patent attorneys and agents are very good in hiding the details of the solution or invention. They
do this to protect their client and their invention. Patents are like land titles. If you have a land
title, you have a CLAIM over an area of land being the rightful owner of that property. The
government recognizes, honors and protects you from others who will ENCROACH or claim
your land as theirs. The same applies with Patents. Only in patents, others may INFRINGE on
what you claim. This is why patent attorneys and patent agents religiously hide the CLAIMS of
the patent by using crafty wordings and jargon unfamiliar to the common public. They are
always hoping that somebody like you -- a new innocent researcher, would make the mistake of
claiming something that would violate or infringe the rights of their client, that is, if you claim
something that they've already claimed. They usually get huge sums of money in
winning INFRINGEMENT cases, hence, the reason for the secrecy. It's the name of the game
when it comes to IP assets!
An example of a patent document "Beerbrella" is attached in the file [US6637447B2
beerbrella.pdf download].
To know more about the parts of a US patent document check this file [parts of US patent
document.pdf download].

Notice how the authors describe their invention in their claim's section (last page) . They don't
use the word "umbrella" directly to describe their invention, instead they used the words like "a
shading apparatus". If you do an ordinary search using "umbrella", you will never easily find this
patent document. As you can see, you will find other colorful and crafty words in the same
document. It is in the claims section that you need to review carefully to find if your work is
novel or not. Aside from that, you'll find out if you are infringing any of the author's claims or
not.
There are also other important information that you can find in a patent document. To find these
information, different types of patent searches are available. These includes state-of-the art
search, novelty/patentability search, validity/invalidity search, freedom-to-operate search, etc.
See attached file [01. types of searches.pdf download] for details.

As you can now see, patent searching requires a HIGHER LEVEL OF SEARCH SKILLS to find
and capture the relevant information that we need, that is, information or details in a patent
document that would make or break our research work (novelty, non-obvious, industrial
applicability). To that effect, Patent Searching is considered as a SCIENCE and an ART. We
will apply rigid and proven methods, tools and techniques to search patent documents. But we
also need to have a creative and artistic mind to conduct these specialized types of searches. A
more detailed discussion on the art part of searching is on the attached file [02. basics of patent
searching.pdf download].
Patent Search Basics - How do we
search?
PART 02. So how do we search?
Patent Searching involves a series of steps (decisions and actions) that progressively
narrow the information retrieved.
It goes through the following phases:
1. preparation phase
2. search phase
3. post-search phase
In the preparation phase, you define the limits of the search
(contextual, local or global searches), you need to identify the key
concepts/keywords to be searched, generate synonyms and avoid homonyms,
and apply search classifications.
In the search phase, you may search individual concepts/keywords or you can
combine them to narrow down the search results that are relevant to what you are
searching for. Concepts can be broken down into four groups, in terms of
- problem, structure, function, and features of the solution.
In the post-search phase, you evaluate, analyze and report the results. When a search
is conducted, you need to consider PRECISION and RECALL due to the volume of
data/information available online. If the search is too broad, the precision is low,
there are many irrelevant documents. If the search is too narrow, the recall is low,
there are many documents that are missed after the search. You have
to OPTIMIZE your search in terms of these two requirements.
Detailed examples and illustrations of the above concepts are found in the file [01. types
of searches.pdf download].

CLASSWORK
For your assignment, you will use the same file [RO1.Abstract] that you submitted.
However, this time, you will identify the key concepts found in your abstract section by
highlighting them in different colors. If your abstract was well composed - it will be easy
for you to find the word/s or phrase/s that are related to the problem (RED),
the structure (BLUE), the function (YELLOW) and the feature (GRAY) of your
proposed solution. Your submission would now look like the report file [RO2.Concepts].
Good luck identifying the four concept groups of your research
proposal/thesis/dissertation!
Keep safe always.

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PART 01. Why search and why do a "patent search"?

See attached file [01. types of searches.pdf download] for details.

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