Patent Searching: Sleuthing Your Way to Stronger Patents
Aug 25, 2021
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The podcast discusses the challenges of patent searching and the importance of conducting thorough searches. It emphasizes the value of manual analysis and the limitations of automated platforms. The chapter explores offensive and defensive patent strategies for startups and provides tips for effective searching. They also analyze the power transmission of a mobile device and discuss modifications made by Apple to overcome a similar reference. The process of conducting a comprehensive patent search is explored, including examining examiner's reasons for allowance, forward and backward searching, and finding multiple references to support claims.
01:09:27
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Quick takeaways
Patent searching helps inventors determine the novelty and non-obviousness of their idea and saves time, money, and effort by identifying existing prior art and potential competitors.
Different types of patent searches serve specific purposes in guiding business decisions and protecting intellectual property, such as patentability searches, infringement/non-infringement searches, and state-of-the-art/landscape searches.
A comprehensive approach to patent searching involves using various databases, conducting forward and backward searching of examiner-sided references, understanding the invention context, and leveraging knowledge of different technology areas.
Deep dives
The Importance of Patent Searching
Patent searching is essential for inventors and companies to determine if their idea is novel and non-obvious. It helps save time, money, and effort by identifying existing prior art and potential competitors.
Different Types of Patent Searches
There are various types of patent searches, including patentability searches, invalidity searches, infringement/non-infringement searches, freedom-to-operate searches, and state-of-the-art/landscape searches. Each search type serves a specific purpose in guiding business decisions and protecting intellectual property.
Strategies for Effective Patent Searching
Patent searching requires a comprehensive approach using a variety of databases and keywords. Forward and backward searching of examiner-sided references is crucial, along with understanding the context and structure of the invention. Experience and knowledge of different technology areas also play a significant role in finding relevant references.
The Value of Patent Searching
Patent searching helps draft strong patent claims, ensures compliance with patent laws, and assists in offensive and defensive patent strategies. It also provides valuable competitive intelligence, aids in reducing prosecution costs, and mitigates the risk of infringement litigation.
Client Engagement in the Searching Process
Clients are typically engaged during the patent searching process to gather their input, understand their invention, and align the search with their goals. However, for certain searches like freedom-to-operate or invalidity searches, input from clients may be limited.
You have an idea and you’d like to protect it. But can you? Is it novel? Non-obvious? Would you eventually be able to license or enforce your patent down the road? Who else is competing in this area and where’s the whitespace? If you get the patent, can you freely produce and sell the idea, without the costly risk of infringement litigation?
These questions and the quest for their answers unfold like a detective mystery. The sheer magnitude of source material to sift through is overwhelming. 172 countries with patent systems, over 11 million active patents across the globe, millions more published, but not granted, topped off with endless volumes of non-patent literature. A multitude of keywords, synonyms, and domain specific languages. Countless databases. A cacophony of clues, mixed with an abundance of superficially convincing evidence that could ultimately prove irrelevant. An overly litigious villain competitor lurking around the corner. And the greater powers of observation and the superior mind of a detective to cut through it all and make plain the answers to our untrained eyes!
Shelley Couturier, Patent Strategist, Search Specialist, and Chief Sleuth here at Aurora, leads a discussion along with our all star patent panel into the low cost, high return world of patent searching. The domain is complex, but the efforts have one of the highest possible ROIs of anything you can do, especially in the early stages of your patent journey. With some practical guidance and a little help, patent searching will save you significant time, money, and effort in the long run, all while yielding a much stronger patent overall. I assure you, listening in will be a gift to future self.
Shelley is joined today by an exceptional group of IP experts including: * Ashley Sloat – President & Director of Patent Strategy at Aurora Consulting * David Cohen – Principal at Cohen Sciences * Amy Fiene – Patent attorney at Vancott and adjunct professor at BYU
Oh – and back by popular demand, the group kicks off with another gripping ice breaker, which turns into an instant classic.