Patents Search Strategy and Implementation

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Patents search shock

It often happens, that an inventor is shocked to read the patents search report: he believed his precious invention, which he has kept in utmost secrecy, is his and only his secret, well kept with him; suddenly he finds others already have patents dealing with the problem that his invention addresses- and their approaches are somewhat similar to his. Horror on horror's head.

The inventor panics, forgets the details of his invention, and becomes discouraged.

A possible solution to this danger is to prepare a written, detailed description of the invention before performing the patents search.
Then, when the inventor panics from the search results, the description he has prepared beforehand will remind him of the benefits of his invention, and will help him to objectively address the patent search results.

An important principle in patenting is that the inventor is permitted to use terms he chooses for his description, terms which may not be the standard terms in that discipline. This principle is called:
Applicant is own lexicographer

Therefore, when you see in a patent terms similar to those used in your invention, keep in mind that they may mean something entirely different in that other patent, thus may describe a totally different invention.
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The first, essential decision in searches

The first, essential decision, which will define the whole strategy and approach, is the purpose of the search. For example, search prior to filing a patent application differs from a freedom to operate search, and the results are entirely different.

Don't start a patents search before arriving at a clear and well-defined articulation of the goal of the search.
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Danger of being overcautious

The inventor is sometimes intimidated and told that he must ensure there is no patent in the world like his invention, as this would be preposterous and a terrible waste to file a patent application if there is a patent like his invention.
I believe this is a wrong approach, because:

a. An in-depth patents search may cost many times more than registering a patent.

b. There is no certainty in searches, I never saw a search report stating that "there is no patent like your invention."

c. You should weigh the expense of filing a patent application vs. the potential loss of a golden opportunity, maybe one in a lifetime. Should you lose that opportunity, you may regret it later.

Decisions on patenting involve a measure of uncertainty, like all real-life endeavors.

Therefore, I recommend investing in patents search an amount commensurate with the total investment you are contemplating for your invention; and to consider the expenses in patenting vs. the loss of possible gains from successfully exploiting your invention.
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Tips on patent searches

You should perform a patent search only after defining the invention and the goal of the search. Otherwise one drowns in an ocean of information, and the search may not benefit you.

It's essential to put in writing a detailed description of your invention, prior to the search. This stage is of paramount importance, as you will see later on.

It's extremely important to define the goal of the search. For example, prior to filing a patent application you should search for patents worldwide, as well as published applications, technical data, etc.- it's all relevant.

If the goal is freedom to operate, you need to search patents in force in the country you desire to operate. Optionally you may also search patent applications, which may pose a threat in the future.
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Patentics

Patentics uses scientific tools to compare patents, thus helping the patent attorney in drafting patent applications, answering the examination, etc.

Patentics was approved for use before the Nazareth District Court, when Marc was invited to present his expert opinion there.

Your invention may include various embodiments at the system level, as well as at its various subsystems. Other patents may be complex as well. How to define a successful strategy may be a difficult task, that is difficult to do manually, in one's head.



Patentics is described in this patent application
Scientific method in patents protection
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Free patent search sites

Search at the US Patent and Trademark Office

Google patents search

Worldwide collection of published patent applications from 100+ countries

91 million patent documents at WIPO

Patents search at the Israel Patents Office

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Don't miss your opportunity!
Act Now

In all patents-related tasks there is a deadline. If you miss it, there are additional costs, or it may be impossible to continue: To answer an exam report, request a PCT exam, revive an abandoned application, etc.

You are competing with all the inventors worldwide- the first to file an application, has a better chance to win.

Marc personally handles all our office's customers- and only accepts a limited number of projects at a time.

Marc personally answers questions- and only a limited number of questions each day.

You may have one good idea, an once-in-a-lifetime opportunity. Don't miss it

Dear visitor: Your questions welcome

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The information in this site does not constitute advice and does not create a patent attorney-client relationship. Browsing the site does not create a client-service provider relationship.

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The information in the site is background material for a meeting with a patent attorney; it is not legal or professional advice. .

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Consult with expert professionals before taking any action.
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+972-3-922-6767
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Eng. Marc Zuta
Patent Attorney Ofice

Beit Amot Mishpat, Tel Aviv, ISRAEL
P.O. Box 2060, Petah Tikva 4912001
Email: marc@patent4u.co.il