The first step you need to take when embarking on a new venture is to see whether there is anything exactly like your idea out there. While Google and other Internet search engines are amazingly handy in showing you what’s available in the world, don’t discount good old-fashioned books as valuable sources of information.
But the most important thing you can do at this time, when you’re still working on your idea, is to do a patent search. Once you’ve done a patent search, we can move on to trademark searches, which will help you determine whether the name you want to brand your product or service with is still available. Most patent documents are available for free online at the Patent Offices of the various countries. Importantly, more than 80% of all information contained in patent documents is not contained anywhere else!
Considering that there are more than 100 million patents searchable free of charge means that patents are one of the most valuable resources that any person or company can use when trying to avoid re-inventing the wheel. It’s also useful to see how other people have approached the same problem that you’re attempting to solve and you will easily be able to see where there are gaps between the various patents that your idea could perhaps plug.
Many times, when I’ve asked inventors whether they’ve done patent searches, they say that they have, but it turns out that they’ve only done regular on-line types of searches using Internet search engines. However, patents (and trademarks) are seldom indexed in such a way that regular search engines can find this information. Google has, fortunately, gone to great lengths to index US patents and recently they’ve included foreign patents as well, so a good place to start is to visit the Google Patents site and type in a few keywords to see what pops up. It’s also handy to visit the source of this information – the US Patent and Trademark Office (USPTO) database – to see what they’ve got listed.
Most countries have a so-called ‘absolute’ novelty requirement, meaning that no-one (including you, the inventor), must have made the invention public before filing a provisional patent application for the invention. In other words, if there is one person out there who had come up with something identical to your concept, then your patent won’t be valid. The problem, of course, is to know whether your concept is in fact new or not – in other words, if you have not disclosed the invention, how do you know whether anyone else has maybe come up with the same invention before you did? Any such prior documents, prior patents, or disclosures are called ‘prior art’ and may be detrimental to the novelty of your invention. However, it’s worth bearing in mind that to completely knock out your invention, such prior art document must disclose every aspect of your invention – in other words, it must have described something identical to your invention for it to completely destroy the novelty of your invention. If your invention therefore has aspects not disclosed by the prior art, then the next hurdle to overcome is the inventiveness requirement, as discussed later on in this book.
An indication of the novelty of your invention may be obtained by conducting patent and literature searches. You may wish to contact a patent lawyer for specialist searching services on dedicated patent databases.
Now that you know a bit more about how the patenting process works, it is time to start with the preparations and background research about your specific idea or product. It’s important to note right at the outset that there are two basic kinds of searches:
(i) Novelty searches, that provide a global indication of whether your invention is new or not and are usually done through on-line databases viewing many international records at a time. Novelty searches are done to stop you re-inventing the wheel and wasting your money on senseless patent applications; and
(ii) Infringement searches, that are done through the patent records of a country before you start exploiting the invention in such a country – infringement searches are conducted in order to locate patents that have been filed in such a country, that are still in force (i.e. filed in the past 20 years and maintained annually), and that may stop you from exploiting your invention in said country. Infringement searches are also called ‘freedom to operate’ searches, as they provide you with an indication of whether you will be infringing someone else’s patent(s) who will then be able to stop you from operating in a country. Infringement searches will be covered in a later chapter.
Novelty searches – is my idea new?
As mentioned above, most countries have a so-called ‘absolute’ novelty requirement. The US and Australia are two of the only exceptions, but even in the US the newly promulgated America Invents Acts means that the first person to race to the Patent Office and file their patent application wins the race.
Two things are of importance here – (i) you must have kept your invention secret until such time as you have protected it by way of a provisional patent application; and (ii) the same invention must not have been patented, disclosed, manufacture, sold or exhibited by anyone else.
At the outset it’s important to realize that it’s impossible to determine whether your invention is 100% novel, i.e. new. However, it is useful to first conduct a patent search, so that you at least have an idea of how much attention your field of invention has received from other inventors. If you find something that knocks out your invention, well then at least you can stop lying awake about it at night and move on to the next new idea. If it isn’t knocked out, then you’re ready for the next step.
While there are several patent databases that provide substantial global coverage all in one place, these databases are usually quite costly. I would always recommend having the best search done by patent professionals, provided you can afford this.
However, as your idea is still untested, most inventors prefer to conduct a cursory search through some of the free websites, before filing a provisional application. Should you find out at a later stage that your invention is indeed not novel, then you can always elect to have your patent lapse or to abandon it without incurring any further costs. This, unfortunately, is one of the realities of the patenting process.
When conceptualizing your idea, try the following free sites that are easily searchable and provide details of over 30 million patents and patent applications when combined:
(i) Google Patents. Google has gone to great lengths to ensure that it captures in electronically searchable form every single US patent filed between 1790 and the present day. It’s an easily searchable and user-friendly interface which makes it very easy to at least get an idea of how densely populated your field of invention is. Google has until recently only included US patents, but they are working steadily toward including patents from the European Patent Office (see below) and other Patent Offices. Go into Google, type in Google Patents, and you’ll be taken to an awesome collection of some of the most easily searchable patent documents available free of charge. One of the main advantages of this site is that you get to use the Google algorithms to scan patent documents, which means that you get the most relevant results first. It’s also the best way of seeing the patent drawings at a glance, which is often helpful when you have many documents to work through.
(ii) The next is the US Patent and Trademark Office website, available at uspto.gov. This website only covers patents filed at the United States Patent Office (by American and foreign companies and individuals) but does not include patents filed in other countries.
(iii) In addition, I would recommend searching the European Patent Office website, espacenet.com. This website contains patents and patent applications not only from Europe, but also from several other countries. It’s not as easily searchable as the USPTO website, and may take a little more time to extract the best results from it.
(iii) One of the databases with the broadest free coverage is that hosted by WIPO. Go to WIPO and click on “PatentScope” for access to over 70 million patent documents. The search interface isn’t that handy and the way in which patents are displayed can be quite intimidating and confusing for a first-time user.
Ninja tips for on-line searches
To start off with, you can do two types of novelty searches to see what has been done before (these are called ‘novelty searches’ as they give you an indication of whether your idea is new or not). The first type of search is one in which you search for patent using the names of companies or individuals that you know have been active in your field of interest.
A second type of search is a keyword search, much like you would use keywords to search for information on the World Wide Web. Either way, you will be astounded by the amount of information you will discover. Keep on refining your searches using synonyms and some of the words that you pick up in the patent documents (called ‘patent specifications’) that you find.
As mentioned above, you may also want to search through the patent databases of the European, Canadian, and Australian Patent Offices (just type in the name of the Patent Office into a search engine and you’ll most likely find it quite easily). The easiest way to get the patent information you need, though, is to go to Google, type in Google Patents and, once you hit the Google Patents page, type in your keywords to see what pops up. This will give you a good idea of the patent landscape that you will be playing in, but bear in mind that many patents are published in languages other than English, so you might miss them. Google can give you machine translation of certain foreign texts, but not all of them.
Because patents are indexed using not only keywords but also huge amounts of bibliographic information, you’ll be able to find the names of other companies active in your field of expertise, see where they are located, see who cited their patents (another useful lead to find technology in your field), and see who individual inventors in your field are. Some companies use these records to identify prolific inventors in their field of expertise that they can then try and poach from their competitors.
While you’re doing this, make sure you write down all your thoughts regarding your idea – the brand, the look & feel, the advantages, the disadvantages, the various components, variations of your idea that could work and the like. Also, keep notes on how you came up with the various ideas, and how your product or service is different from others.
You will also see that it is possible to search using the patent classes into that patents are classified. These classes are only useful if you have an exact description of your product and you wish to limit your search to a particular application only. Remember that no search can ever be considered exhaustive or conclusive, as not all the patent records of all the countries are searchable on-line. In addition, not all novelty-destroying disclosures may have been made in patent specifications – such disclosures may also have been made in trade journals or scientific literature related to your field. In addition, the patent records for your country might not even be available online. It’s always worth traveling down to your local Patent Office or getting a patent attorney to do a search through your country’s records to ensure that you are free to make and use your idea (whether you have a patent for it or not) – this is explained in the section dealing with patent infringement searches.
The patent searches should be done as thoroughly as possible, but you must always remember that your results are dependent on your choice of keywords and the accuracy and completeness of the patent records you are searching. Bear in mind also that there may be a potentially damaging disclosure out there that you could miss completely – this is one of the reasons why you should put as much information into a patent specification at the time of writing it (discussed below), so that you have as many potential fallback positions as possible, should earlier documents that pre-date your patent filing date (also called the ‘prior art’) come to the fore at a later stage.
When using keywords, try to think of as many possible descriptions of your invention as possible. Use a dictionary and thesaurus to look for as many alternatives to each search term as possible and include these in your search. Such a search will give you an indication of whether anyone else has brought an invention identical to yours into the public domain.
As you’re doing your search, print out or save the most relevant patents or other documents that you find. Remember, you will have to distinguish your idea from any and all of these prior disclosures (referred to as ‘prior art’) and what you want to create is something that is truly new and inventive.
What can we learn from patent searches?
Each patent on file is a treasure trove of information. Not only do patents list the full names and addresses of all inventors (in case your company has grown and you want to poach someone useful), but they also show the specific patent ‘class’ in which the technology resides (meaning that you may want to have a look in that class or sub-class to see what other patents have been filed in that class). It also gives you the name and address of the entity that owns the patent, so you can see whether they’re local or international companies. Usefully, most US patents list the patents that they’ve cited as being relevant. In other words, they show you who else is active in this field and what they’ve invented.
This provides a handy diorama or snapshot of the patent field. It’s also possible on some of the patent websites to see who cited any given patent after it was filed, so that you can get as complete a list of competitors as possible. The first page of the patent also provides a short description (abstract) of the invention, as well as a technical drawing which makes it easy to quickly scan and review the patents when conducting your searches. It also states when the patent was originally filed, so that you have an idea of how long they have been active in this field. The patent databases will also frequently be able to let you know whether the patent has been renewed (annual renewal fees are payable to keep a patent in force for the full 20 year period) or whether it has lapsed. If it has lapsed the in most cases you can go ahead and use the technology contained in that patent, provided of course that you do not infringe any other subsisting patent rights of someone else.
Trademarks and Designs searches
Similarly, when conducting trademarks searches or designs searches, you’ll be provided with a broad overview of all relevant brands or designs that may impact negatively on the originality of your idea. You’ll be able to see who owns which brands or designs, when they were filed, and how they described the fields in which their trademarks are active (called trademark ‘classes’).
Finding the gaps
The next step is to compile this information in a format that is easy to digest and understand so that you can avoid the patents of others and see if there is a gap for you idea. If done correctly, this can also serve as the basis for a discussion with your patent attorney.
My preferred way of dealing with all of this information is to draw up a table, either by hand or in a word processor or spreadsheet program, in which I list the following, from left to right at the top of the table:
Patent number, Title, Name of patent holder, Description of Patent, and How My Idea is Different.
Under each of these, fill in the relevant information. For the last two columns, don’t go into too much detail. As long as you can provide a description of how your invention differs from each of the patents that you then start listing down the left hand side of the table, you’ll be fine. Make sure you don’t end up with a list in which you describe how each patent differs from each other. No, it’s important that you are able to list the key aspects of each patent, and next to that indicate how your patent differs from this.
This is an important document, as it is a very handy document to keep at hand when you start writing up your invention in the form of a disclosure to give to your chosen patent attorney, or if you want to draft (i.e. write) and file your own patent application. The reason for this is that your patent attorney will feel a bit uneasy just writing a patent document (called a ‘specification’) just based on your idea without an idea of what has gone before. How can he or she zoom in on the aspects of your invention which are new and inventive if they have no guidance of how your idea differs from what has gone before? Now, they can also conduct a search, or read through all of the patent documents that you have found, but they’ll do so at $250 to $750 an hour, depending on which patent attorney you’re using. Save them the work and tell them exactly how your invention differs from the prior art – you’ll be saving yourself a significant amount of money.
Even if you’re not planning on coming up with a technical new invention, it’s still worthwhile going through these steps to see how others have done it before. Let’s say that you’re planning on starting up an accounting firm that specializes in filing tax returns cheaply. Well, there’s nothing patentable about filing tax returns cheaply, but while you’re searching you discover a patent that describes, in great detail, an automated system for allowing clients to fill in their details on the web and use this to partially or fully populate a tax return form. If this patent is filed in your country that you will be active in (let’s say you’re a US tax agent and the patent was filed at, and granted by, the US Patent), then you won’t be able to do the same thing that the patent holder has claimed in their patent.
This has two effects (apart from making you a bit sad, if this was what you wanted to do): firstly, you’ll be able to avoid infringing this patent by not doing this in your business and, secondly, you could use this patent as the basis for a brainstorming session in which you try and improve the patented system or attempt to ‘invent around’ it, thereby generating your own IP for which you can then apply for patent protection.
It’s also possible to use special software suites that provide you with a patent ‘map’ or ‘landscape’. These are usually expensive and, even though they generate clearer pictures of where there are gaps in the market, it’s best left to the professionals to work with these. If you get a patent attorney to do a search for you, then ask them whether they will generate a report using patent landscapes or not. If they don’t, then it’s no big deal, but if they can then this can sometimes be quite a handy way of seeing where patent hotspots are that you should avoid.
Once you’ve seen where the gaps could possibly be, it’s time to brainstorm, conceptualize, and protect your idea.