Working with a Professional Patent Searcher

For the information you get, a professional patent search is a smart investment.  Out of the search, you can make a “fish or cut bait” decision.  You can also use the information to improve your invention.

Getting Started

To get a patent search started, you will need to get the information about your invention into a transmittable form, an invention disclosure.  Most searchers and search firms have an invention disclosure form they can give you if you need it, but we think it’s smart to already have something written down and have pictures or drawings.  It’s all about getting your idea into a transmittable form that someone else can understand.

1. Main Idea Provide a short description of the idea. Don’t worry about details, as those will be filled out in the next few fields.
2. How it Works Describe how your invention works.
3. Size and Materials  Describe any important dimensions or materials used to construct your invention.
4. Problem Solved  Given products currently on the market, what problems are solved by your invention?
5. Unique Features  Given products currently on the market, what features set your invention apart?
6. Similar Products  Can you think of any similar products currently on the market? If not, just answer no. Do you have any additional information?

Search Parameters, Method & Tools

Not all patent searches are created equally, so it’s good to know what you’re paying for. 

Decide what jurisdictions are to be searched.  Will the searcher focus on US patents or do you want a worldwide patent search?  We are strong proponents of starting with a US-only patent search because the US remains the major destination of all patent applications in the world. If you need to, you can use the US search as a basis for extending out into a worldwide patent search.

You should make sure that the searcher will be looking at published patent applications in addition to granted patents.  Although applications are not patents, they can still serve as prior art in a patent examination.

Be sure to ask what resources the searcher will be using.  There are several well-known tools for conducting patent research, including Thomson, Patbase and even Google Patents, but the best tool is the Examiner’s Automated Search Tool (EAST, for short), which is only available at the Patent Office in Alexandria, Virginia. With EAST, a searcher can rapidly view thousands of patent documents and do much better in-depth searching.

When the search is completed, what are the expected deliverables?  How much information will you be getting and how will it be delivered to you.  The search results should include a description of the search strategy, including the classifications searched. 

We have more information about reading a patent search here.