Patent Searching: Sleuthing Your Way to Stronger Patents
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Aug 25, 2021
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.
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insights INSIGHT
High ROI From Early Patent Searching
Patent searching has one of the highest possible ROIs, especially early in a patent journey.
Investing early saves time, money, and yields stronger patents.
volunteer_activism ADVICE
Prefer Human Analysts Over Pure Automation
Use trained searchers to analyze references and combine teachings for obviousness.
Relying only on automated tools misses context, teaching-away, and motivation to combine.
insights INSIGHT
Obviousness Is In The Eye Of The Examiner
Obviousness rulings vary greatly by examiner, so predicting specific combinations is futile.
Find ballpark references to craft backup claim positions and reduce prosecution risk.
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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.
Patently Strategic - Patent Strategy for Startups