This article describes how to do a pre-patenting prior art search for an invention in order to determine if the invention is new (novel). These prior art searching basics are written by our patent and prior art searching expert a USPTO registered patent attorney. The prior art search is the first step in patenting an invention. The prior art search is also conducted to provide the prior art needed for the patentability study. The steps below describe how to start and conduct a prior art search, also known as how to do a patent search.
A prior art or patent search is conducted to identify the prior art for an invention. The novelty and non-obvious elements of a patentability study are determined for an invention based on its prior art. The prior art search is the essential first step of our 5 steps to patent. Licensed patent practitioner help is highly recommended to conduct a patentability study and evaluate whether an invention is novel and non-obvious.
Inventor Tip: An inventor has 12 months from the date of public disclosure of an invention to file a claim for a patent for a new invention. In other words, a disclosed invention may become its own prior art 12 months after it is disclosed to the public.
How to do a Patent Search Yourself Comes Down to Basic Research
A basic pre-patenting prior art search (prior art search, or patent search) is researching various data sources looking for the things an invention claims to be. Patent searching is determining if there is prior art that discloses what your invention claims (what it is). Prior art includes existing patents, patent applications, and non-patent literature (anything on any website). It can be found anywhere around the world in any language. Prior art is any existing documents that show or describe the invention. However, it can also be things that are similar and might make the invention obvious. Anything that describes how to make and use an invention is prior art.
In other words, a prior art search is research looking to find a disclosure or documentation of your invention, or the parts (elements) of the things your claims to be or do. This is important because a disclosed invention is no longer novel. If there is prior art describing your invention it is not new because it is already described. A consequence of not being novel is that the invention is not patentable. Therefore, no patent will be allowed, or issued, if the invention is already disclosed in the prior art.
Everything Necessary to do a Prior Art Search Yourself
There are three basic elements of input needed to do a pre-patenting prior art search. You will use a good description of the invention to create a list of keywords and phrases that describe what the invention claims to be. You will use the description and keywords and phrases to search within as many classes as your invention might belong. After collecting these essentials for prior art searching you then you enter the classification, keywords, and phrases into the appropriate search engines and conduct a pre-patenting prior art search for your invention. For pre-patenting prior art searching, you will need the following three things:
- A good description of the invention including how to make and use what is claimed;
- A list of keywords describing the elements of what is claimed; and
- A list of the classifications the invention might belong within.
Start with a Good Description of the Invention
The place to start before the actual in database searching is to write a good description of how to make and use what the invention claims to be. A description of the invention that is just a simple sentence or two is the easiest to work with. A concise description is best. This is because what you will need for actually searching in databases is just the right few keywords or phrases and the right classification(s). When searching, you are looking for any existing products and processes that are similar to the invention. Those things that are prior art will be described with the same words and phrases that the invention is described with.
The better the description of what is claimed in the invention and the details of the elements or parts needed to make and use the invention, the better the search results will be. It is worth taking some time to do the describing of what the invention claims to be in order to get the best description you can. The better the search the better the patent application written will be.
Create a List of Keywords Related to the Invention
After you have a good description of the invention. You will use that description to create a list of keywords and phrases that describe the elements or parts of your invention. It is best to focus on the keywords and phrases that chosen will be those keywords and phrases used in writing the claims of a patent application for your invention.
When considering how to do a patent search, the description is used to develop a good set of keywords. Then, the keywords are the words that are used for database searching. The best keywords to use are those terms and phrases about the invention and its field of use that describe it most accurately and completely. When searching, a good concise description is simpler and easier to use than a long explanatory one. Further, the concise description likely already has most of the keywords needed to start and do a search. In addition, too many synonyms can become confusing.
Find at least one Classification for the Invention
The final piece of input you will need to do a pre-patenting prior art search is the classification for the invention. You need to search the patent and patent application databases using any classifications the invention belongs within. This kind of searching is done using the keywords from the elements of the claims of your invention. You need to search each of the various classifications that the invention is likely to be put in for the elements of the claims of your invention.
The classification system to use is the CPC Scheme. The USPTO uses this classification system. The CPC Scheme is the Cooperative Patent Classification (CPC) system of classifying and defining the arts that inventions belong within. The CPC (like all classification systems) categorizes inventions into classes. The idea, then, is that all the other inventions that are like an invention will be in the same class(es). Thus, searching the likely classes is essential to a good pre-patenting prior art searching.
Important Tip: If you don’t know or can’t find the class(es) for your invention, one easy place to start is the class(es) of similar patents found when searching. First, find similar prior art. Then, use that classification as a starting point for your new inventions classification search.Carson Patents®
Where to do the Searching – What Databases to Look In
How to do a patent search includes a lot of database searching. The following data sources is a respectable list of places to search. The more places searched, the more complete the search. However, the following list of sources will give you a good start, and, quite likely, more prior art (existing stuff like yours) than you were expecting. In order to have a good basic search, these databases represent the minimum list of places to search. There are specialty patent search firms. Be careful to verify credentials.
Recommended Patent and Patent Application Databases to Search
While we recommend searching in at least two of the following patent and patent application databases, searching at least one is required to actually conduct a pre-patenting prior art search. All three databases have patents and patent applications from all over the world in several languages that can be searched in your selected language.
- European Patent Office (EPO) – epo.org
- World Intellectual Property Organization (WIPO) – wipo.int
- PatentScope is highly recommended, and has good language translations. If you only search one patent document database, pick PatentScope.
- Google Patents – patents.google.com
- Google Patents is a good database to search for patent documents. You can also search for Google Scholar documents using the Google Patents database.
Recommended Non-Patent Literature Academic Documents Database
Searching through the patent document databases above is not enough, you also need to searching for documents related to your invention that might be in the scholarly and academic documents. It is the case that many times new ideas and inventions are first described in some research paper or thesis document from a student. The Google Scholar database is an academic documents database that can be used to search for non-patent literature that might describe how to make and used your invention. Searching the Google Scholar database is a minimum requirement for a pre-patent prior art search.
Recommend Internet Search Engine for Non-Patent Literature
Finally, when conducing a pre-patenting prior art search, it is important to search the internet generally. In other words, a prior art search includes searching with a regular search engine search too. Carson Patents recommends using the DuckDuckGo search engine for personal security and repeatability reasons.
How to Search for Prior Art Patent Documents – 4 Steps to Searching
How to conduct a pre-patenting prior art search.
Approximate Time 5 hours
Internet Keyword Search
The internet keyword search is the first step in how to do a patent search. Using the keywords and phrases that describe the features and functions of the invention, conduct a search using an internet search engine. While there are many internet search engines, they are not all equal. Using an open non-tracking search engine is both safer and far more repeatable than one that tracks. Carson Patents recommends DuckDuckGo for all internet searching needs. Starting with an open internet search is easier to do and frequently helps provide additional keywords and phrases that are related to the claims, features, or functions of the invention. Start with as few keywords as possible and add more as needed until you find anything similar or are certain that the related keywords do not already exist as an invention. You are looking to find anything similar to the invention to discover if the invention has already been created. Be sure to collect copies of relevant findings. If there is not downloadable content for the findings, print the screen or print the page to a *.pdf file. The collection of things you save is the prior art for the invention.
Patents Keyword Search
The patents keyword search is the second step in how to do a patent search. Using the keywords and phrases that describe the features and functions of the invention, search a worldwide patent and patent application database. While there are several, Carson Patents recommends using PatentScope. This patent search engine is provided by the World Intellectual Property Organization (WIPO) and includes a language translation as needed for documents from other countries. The purpose of searching on PatentScope is to find anything similar to the invention. Be sure to collect copies of both patents and patent applications. To ensure you have the figures to review, save everything similar you find as both the original document and a translation. Any patents, even expired ones, are prior art. The same is true for any patent application documents. Remember, anything, regardless of where it was found, can be prior art.
Patent Classification Search
The classification search is the third step in how to do a patent search. If you know the classification, search a worldwide patent and patent application database for documents in that class. If you don’t know what classification to use, you can use the classification(s) from any similar prior art. If using prior art does not comply, you can also research the appropriate class using the USPTO’s Classification Resources. Enter your best keywords in the classification text search box and research the options for the appropriate class for the invention. Once you know the classification, search a worldwide patent and patent application database for documents in that class. Carson Patents recommends using PatentScope. Again, you are looking to find anything similar to the invention. Be sure to collect copies of both patents and patent applications. Similar to the second step, to ensure you have the figures to review, save anything similar that you find as both the original document and a translation.
Search in Related Patent Classes
The search for related inventions is the fourth and final step in how to do a patent search. Search a worldwide patent and patent application database for documents in other patent classes that are related to elements or keywords related to your invention. Carson Patents recommends using PatentScope. In this search, you are looking a description that might be able to be used in making the invention or used for the same purpose as the invention. As with the other patent document searches, be sure to collect copies of both patents and patent applications. Similar to the second and third steps, in order to ensure you have the figures to review, save anything similar that you find as both the original document and a translation.
Estimated Cost: 1600 USD
- Description of Invention Features and Functions
- Ample Time for Reading
- Internet Search Engine – https://duckduckgo.com
- Worldwide Patent Search Engine – https://patentscope.wipo.int
Materials: A good description of the invention. A list of keywords and phrases for the invention. A classification or description of the subject for the invention. The invention claims if possible.
Patent Practitioner Help Recommended
The United States has specific criteria for disclosing prior art. Knowing how to do a patent search is only a part of the patent application process. Whether it be a patent, patent application, or other disclosure that may be relevant, keeping track and ensuring submittal of relevant prior art can get complex. For example, in certain circumstances, an earlier disclosure by the same inventor may be excusable, or, worst case, it may be prior art to the invention itself. In other circumstances, an application filed earlier, but published later than your application, may be cited against your application.
Patent Searching is Complex – Hire a Patentability Expert
Prior art searching and patentability determinations are time consuming and complex tasks best done by a patentability expert (patent attorney or patent agent). Additionally, all patents, patent applications, and non patent literature from around the world need to be examined and considered in an exhaustive search. An exhaustive search includes searching in other related fields. When considering how to do a patent search, other related fields are areas of potential use or related technologies that may be applicable.