The importance of a Patent Search before filing an Application. Digest # 06, 2020

Nikolay Miruta
Patent Counsel for IPR GROUP

Patenting of intellectual property (IP) is a rather time-consuming and laborious procedure. Patents are granted only to those inventions that are new, involve an inventive step and industrial applicability. If one or more of those requirements are not met, the Patent Office will refuse to grant the patent, and you will be unable to recoup the investment. Therefore, it is advisable to carry out a patent search on existing databases before registering an IP object. By analyzing the results of a patent search, inventors have the chance to return to the drafting of their application materials and amend accordingly.

What is the purpose of a patent search?

A patent search is aimed at finding existing documentation of specific feature(s) of the prior art from the entire patent information that was disclosed. Said documentation of the prior art is used in determining the patentability of the claimed invention.

The subject of a patent search is determined in accordance with the specific objectives of the object, as well as its elements, parameters, features, and other characteristics. In order to carry out a competent assessment of the results of a patent search, it is necessary to establish the feature(s) with which it will be possible to determine the information for the request.

It is necessary to correctly formulate the goals of the search, choose the appropriate type, and successfully implement and analyze it. Features of a patent search may differ significantly in each industry. For example, for mechanical industry, it is sufficient to search by key phrases and the index of international patent classification, however, this method would not be effective for pharmaceuticals. The most useful tools for prior art searches of pharmaceuticals, are databases that index the chemical structures of organic compounds.

It is important to note that before moving on to a patent search, a careful study of the topic, existing technical solutions, synonyms, specific terms, and their meanings in this field is necessary. It is also important to understand the bibliographic data of the patents, as well as in what cases a particular technology would be really novel and differ in the inventive step.

The patent search is laborious but necessary. It is carried out not only by individuals and organizations wishing to register their invention, but also by various companies that intend to operate the product. The use of already registered inventions by companies or individuals who do not own the patents, is strictly prohibited and can entail huge fines.

The main types of patent searches are:

1) Thematic search, which is carried out to identify all possible information regarding a particular field or technology.

2) Search by name, also related to a thematic search and carried out as an additional one. This procedure involves the analysis of all patents that are associated with a particular individual or company.

3) Search by number, which is carried out when the number of the patent document or an application, is known.

4) Search by classification, carried out to search for technical solutions related to a specific class of the International Patent Classification.

There are three ways to carry out a patent search:

1. Contact an experienced patent attorney.

A patent attorney can assist at all stages of a patent search, starting with identifying a set of features for a search query and ending with a professional opinion after a detailed analysis of the documents has been made.

2. Directly through the local Patent Office.

With this method, an applicant will need to independently prepare all the necessary documents for conducting a patent search (i.e. the set of features, fill the required forms, and pay the fees). The Patent Office provides their own patent search by the use of free worldwide databases. For example, the Ukrainian Patent Office which is an international search authority, use the following databases:

  • Ukrainian Patent Office database (Ukrpatent): “Specialized database “Inventions (utility models) in Ukraine”
  • European Patent Office database: ESP@CENET Electronic Digital Library EPT
  • WIPO Database: PATENTSCOPE Search Portal
  • Database of the Patent Office of Russia
  • Eurasian Patent Office Database: Eurasian Patent Information System EAPATIS
  • U.S. Patent Office Database “Patent and Patent Application Database”

As a result, the applicant will receive only the list of prior art documents without its analysis. Therefore, it would be necessary that the results be studied by the inventor or by an experienced person in the field of technology. In some jurisdictions, the Patent Office uses paid databases which simplify the search process with additional tools for the analytic processing of the results. For example, the Russian Patent Office uses Questel Platinum, Derwent Innovation – Clarivate Analytics, LexisNexis Patent Strategies.

3. Independently.

With this option, the applicant/inventor will need to complete all the stages of the patent search on their own, i.e. identifying the set of features for a search query, searching the prior art documents in the free and/or paid worldwide databases, and analyzing them. In some cases, this type of search makes sense, since a specialist guided by his experience in the field of technology can independently analyze the prior art.

Steps for a Patent search:

For an example of the steps for a patent search, an object “Method for identifying electric vehicles through a charging port“ has been selected. The search was conducted using the databases of the EPO, WIPO, EAPO, Russia and Ukraine.

  1. Identifying of the set of features: in this case, an “electric vehicle”, “identifying mechanism” and “charging port”. A single search word should not be used in this case, as it will result in a limited amount of information. For maximum search performance, different key phrases should be selected. If one of them does not work, then the other could produces a significant amount of necessary information. By selecting and refining keywords, you will eventually find a list of the most suitable patents that can be used in your work.
  2. Searching the databases: These databases have lists of patent numbers and names, through which you can browse to understand how correctly you have selected your keywords. Most often it is not necessary to study and open the whole patent, the volumes of which are very large. Its main components however, should be studied (claims, drawings and cited patents). When you have a list of patents most linked to your object, you should analyze them in more detail.
  3. Patent Search Analysis. The search for patent information and its analysis is a very time-consuming process. After searching for relevant patents and analyzing them, you will most likely be able to draw conclusions on whether there are prototypes that are fully or partially repeated by your idea or not. If documents that fully include all the features of your idea are not found, then you can conclude that your device/method is most likely unique. If the results of the patent search reveal that there is an invention similar to yours, then you will be unable to register it. If the result is unclear, it would be advisable to contact an expert in the field of technology who will be able to establish whether your idea can really be protected. With respect to the claimed object, the following patents for inventions were found: CN109484237A, CN106004470A, CN106505259A, CN107640048A, CN107919689A, US2018290542A, JP2012005319A, CN101594005A, JP2006158087A, JP2018019453A and US20132573AA. These documents provide a method and/or system for identifying a battery through a charging port, which generally correspond to the claimed object. All the essential features of the claimed object are disclosed in the mentioned documents, and the object may not meet the patentability condition – “novelty”.

The patent search does not give a 100% guarantee that all risks will be excluded after the search, as the volume of patent applications is continually growing and not all published by the day of the search. It is also worth noting that not all patent applications are prosecuted successfully. According to the World Intellectual Property Organization, international patent applications increased by 5.2% (265,800 applications) in 2019.

Based on the foregoing, it can be concluded that the patent search is objectively a necessary process before filing an application and its further submission to the PCT phase, which can save the applicant from financial losses in the future.