The way people search is very unique.
Each of us have our own style and each type of search produces different types of results.
I know some people like to create elaborate search strings with lots of ands, buts, not
theses, exclusions, et cetera, and pile through that.
I don’t do that, because I have a fear that that creates a vertical trap where you go
through a stack of results that were screened out or in by your first search.
What I like to do is many, many searches with relevant terms, each of which start with the
entire database of patents and look through those in order to find a relevant patent,
one or two relevant patents.
Once you find one that’s in your space, you can then see what classification that
patent has and use that as a search term.
You can also use an early, let’s say, expired patent on a relevant subject matter.
Use that patent number as a search term itself, because later patents in similar technologies
may have cited it as prior art.
What I love to do when I’m doing patent searching and some way to make it fun, is
that you do a little mini-brainstorm on each of the key elements that you’re gonna be
searching for and so it gives you a chance to be kind of creative and thoughtful about
the terms you’re gonna be using, and then there’s nothing greater than, even though
it’s sometimes it’s agonizing to find that perfect patent, but at least you know
you’re doing the searching right.
I think getting overwhelmed is the common mistake that we see.
There’s over nine million patents out there now, so it’s a lot to cut through.
So I think starting narrow and really focused on exactly what you’re looking for will
give you kind of an initial comfort level with the patents you’re seeing and then
you can broaden out from there.
In terms of tracking, I like people to keep a list of all the relevant patents that they’ve
found.
You’re gonna use that throughout the length of, throughout the duration of the company,
through financing rounds and through exit, but also discard patents that are not relevant.
Don’t keep a grey zone.
It’s either on the list or it’s gone.
You can keep this all in one document or separate documents.
I will keep a list of the search strings that I go through and in parenthesis after, I’ll
actually also list the number of hits that that string gets me and it’ll give me a
good sense of the breadth or the narrowness of each search string and then as far as keeping
a document on hits you’re finding, just keep the basic information.
Patent number, title, inventors, the company that owns it, maybe the abstract or something,
but not a lot of information and not a lot of commentary.
You’ll really want to keep commentary and verbal between group numbers.
Neutral statements are fine.
Claim four is relevant or this paragraph describes an invention like this, but even in that case,
in the later case I mentioned, you may want to keep the terminology to what the application
you’re looking at actually uses.
Anytime you’re rephrasing, you might be giving more credit than what is due to that
patent application or reading things into it that it may or may not disclose.
If you come across a problematic issue, there’s usually, more often than not, a way to get
around it.
If you’re seeing something when you’re doing your patentability searching, think
about designing around, thinking about taking a new approach that, and you may actually
be better off for it.
You’ll have something that’s more patentable and maybe more innovative.
Also from the freedom to operate side, if you see a patent that’s interesting, have
they been paying their fees?
Is it still valid?
Maybe if it’s a solo inventor, you can reach out to him or her about licensing it.
So there’s a lot of options, so don’t panic.
I think the most important thing is not to give up.
Many things look like a problem at first and they’re never as bad as they initially,
you initially think they might be.
Same is true with good news.
Things are seldom as good as you think they are at first.
We see many instances where a problem patent arises and I think you’re talking about
freedom to operate risks potentially where the product that you want to make may infringe
somebody else’s patent.
There’s a whole array of tools that we go through when we encounter that problem.
One is look more closely.
A patent doesn’t always cover what you think it does, unless you’re skilled at reading
claims and understanding how to interpret the file history.
Also there’s a question of validity.
Even if a patent covers you, there’s a chance that the patent is not validly issued and
there are systematic ways to explore that.
I would say that the discovery of a problem patent is just the beginning of a process,
it’s not the end of the effort.