Patent Searching

• Author: Austen Zuege
• Pages: 215-291

6

Patent Searching

This chapter will instruct on the following topics:

• Types and goals of patent searches

• Using search models to determine a search strategy and evaluate

search quality

• Tools, techniques, and databases available for patent searching

• Categories and fields commonly used in patent searches

• Methods for evaluating and auditing searches

• Future considerations and tasks associated with searches for

efficiency

This chapter gives an overview of some common searching

mechanics. This is not an exhaustive guide to patent searching, but

instead highlights some of the important concepts and steps that

must be taken to assure one obtains the results that are required for

any given project. As an overall note, patent searching is more of an

art than a science. A “perfect search” is a good concept, but in reality

there is no such thing as a perfect search. A searcher should utilize the

tools noted herein, as well as his or her own experience, to obtain the

best results for the search criteria given.

6.1 Defining the Scope and Breadth

of a Search

This section will address the tasks of defining search type and scope,

and evaluating search quality.

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216 Patent Freedom to Operate Searches, Opinions, Techniques, and Studies

6.1.1 Types of Searches

Patent searching can be conducted for a variety of reasons, as dis-

cussed in Chapter 3. Typical patent searches include:

1. Landscape

2. Patentability

3. Invalidity

4. Freedom-to-operate (FTO)

Each type of search is described below, as well as the expectations

for the various types of searches.

6.1.1.1 Landscape search or state-of-the-art search

Landscape searches, also commonly referred to as state-of-the-art

searches, are performed to obtain an overview of a specific tech-

nology area or product. In order to obtain the most comprehen-

sive results, the search should include both patent and non-patent

resources, although in some instances only patent resources are

desired. Typically, dates are not restricted, and the search includes

all publications for as far back as the available resources or databases

allow, though dates might be restricted if more focused informa-

tion is sought. Often, the search results obtained are vast in quan-

tity, with high recall but low precision. Obviously, a more narrowly

defined search leads to fewer results but may not capture enough

information, meaning higher precision but lower recall. Sometimes

a landscape search is performed to gather metadata about a given

data set, such as information about applicants, patent classifications,

filing date distribution and the like, in which case high recall but

relatively low precision may be an acceptable trade-off. Landscape

searches may be conducted with less than a complete design in hand,

meaning that specific configurations of a proposed product are not

available and the search captures as many design alternatives as pos-

sible. Landscape searches may result in the location of existing art

that may be licensed, as opposed to trying to create a design-around

for the proposed product. Moreover, landscape searches can be used

to identify patent thickets and/or avoid “hot spots” or “land mines”

created by specific patents before significant product research and

development (R&D) is undertaken. In some instances, a landscape

search might be used as an early, exploratory effort, and be followed

up with another type of search.

A subset of the landscape search is a competitive analysis search,

which will focus on specific competitors to obtain results. The compet-

itive analysis search is more limited than a general landscape search,

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Chapter 6: Patent Searching 217

but will reveal any evidence of prior use of certain aspects of a product

or technology area by the other major players in the technology area.

6.1.1.2 Patentability search

A patentability search focuses on the probability of obtaining patent

protection for an idea or product. Patentability searches may also be

referred to as novelty searches. This search is typically performed

prior to applying for patent protection, and is often used to determine

the proper “scope” of claims filed in a patent application or the likely

scope of patentable claims.1 A prior art reference found in this type of

search may require a “drafting around” strategy when filing a patent

application. Due to the laws of patentability in relevant jurisdictions,2

the search should take into account both patent and non-patent liter-

ature, as well as existing products or methods already known to the

public. However, in certain jurisdictions products on sale or otherwise

commercially available in other countries may not qualify as prior art,

though most jurisdictions today treat products commercially avail-

able anywhere in the world as prior art.

6.1.1.3 Invalidity search

Invalidity searches focus on the concept of trying to prove that a

granted patent is invalid. Typically, a search is done to find publica-

tions or patent references that sufficiently predate the filing date of

the patent.3 Another alternative is to find a product or method that

illustrates a prior public use or sale of the claimed invention. Invalid-

ity searches may include reviews of patent literature, non-patent liter-

ature, and publicly available products and methods. For an invalidity

search, each individual claim in the reference must be addressed sepa-

rately. The search may require multiple prior art references, products,

1 See, e.g., Ron D. S, I A  C: A P L’

G (2d ed. 2013).

2 See 35 U.S.C. §§ 102–103 (providing the requirements in the United States for patent-

ability over prior art based on anticipation and nonobviousness).

3 As discussed in Chapter 2, most jurisdictions follow a “first to file” system whereby

invalidity can be established by prior art that predates the filing date of the patent in

question. However, for many years the United States followed a “first to invent” system

in which invalidating prior art must have been published or publicly available more

than a year before the filing date (i.e., before a “critical date”) to be an absolute bar to

patentability; if less than one year prior to the filing date, the patent owner could poten-

tially introduce evidence of prior invention to defeat the classification of the material as

prior art. In short, any invalidity search must account for applicable law in the relevant

jurisdiction.

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