Searching the Art Behind Innovation

By Stephan Sangwon Kim
November 7, 2015

innovation-letters-bookA quality patent search lays a critical foundation for the protection of virtually any innovation. Not only is searching is the foundation upon which opinions are based and decisions made, but if the decision to move forward is made the search provides critical insight in how to strategically characterize an innovation to maximize the ability to obtain strong patent rights. The importance of good searching simply cannot be overlooked in the innovation to commercialization process.

A complete understanding of the classification system is a prerequisite to conducting quality searches although classification has been changed often and requires continued attention on the part of searchers. The class/subclass searching can be supplemented by conducting a key word computer searches on one of various databases. Namely, the use of databases should generally the coordinated with a class/subclass search to optimize the search results. When searchers reaches a point where he or she believes that the most relevant art that has been considered, and she or he determines an appropriate point. In most instances, searching can continually be extended into less relevant art areas found throughout the classification system.

For many innovations, in addition to doing a traditional patent search it will be of the utmost importance to search European and east Asian literature, particularly literature from Japan or Korea. The patents issued or published by the USPTO, EPO, KIPO, JPO and SIPO cover more than 90% of the world’s patent documents. But when a particularly lucrative innovation is at stake going beyond the patents can be a worthwhile investment.

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Companies employ a wide variety styles for presenting the results of a search. However, any useful search report should include a concise statement of the subject matter that formed the basis for the search. This allows in-house counsel to determine whether the searcher was looking for the correct subject matter and that the searcher understood the subject matter.

In addition, the report should include a statement regarding the field of search. The statement includes the classes and subclasses in which the search was conducted. The stated field of search may also include an indication as to whether integrity checks were conducted. The stated field of search may also identify whether, and what, literature, foreign patents and publications were searched during the course of the search. A search report should include a list of the references located as a result of the search and concrete discussion of the relevancy of the patents in the report. These and other elements of a search report are critical in evaluating the quality of the search.

A through and thoughtful prior art search is crucial to fully appreciate the scope of patent coverage to which an invention is entitled, but more is also required. The individual conducting the search should have a full appreciation of the way in which an Examiner will be reviewing the application once it is under the Examiner’s review. That includes a complete understanding of rejections under 102 (anticipation) and 103 (obviousness), and additionally an understanding of the way in which Examiners look at prior art when considering the best manner in which to establish a rejection. Whether companies choose searching service companies or ISAs (International Searching Authorities) for PCT applications it may be helpful to prepare at least one rough draft claim prior to beginning search. The draft claim and explanation corresponding to related drawings and written description will allow searchers to conduct a search in much the same manner the Examiner will, by considering those prior art references which both read and proper understanding on the claim and those prior art references which teach various features of the claimed invention.

TO BE CONTINUED… Up next is discussion of patent filing options after a search is completed, as well as International Searching Authorities for PCT applications.

The Author

Stephan Sangwon Kim

Stephan Sangwon Kim is a patent attorney with Revolution IP, PLLC, located in Alexandria, Virginia. His practices are focused primarily on assisting 500 fortune companies, startups, and universities with navigating patents to assist resolving patent disputes and preparing and prosecuting patent applications. He can be reached at (703)909-0292 or skim@revolutioniplaw.com.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 2 Comments comments.

  1. Paul F. Morgan November 8, 2015 10:34 am

    Good advice.
    Re “when a particularly lucrative innovation is at stake, going beyond the patents can be a worthwhile investment.” That is also when filing PCT and requesting EPO as the searching agency usually makes sense, since foreign filing and foreign application maintenance is very expensive. Often an inventor or employer view of what actually is “a particularly lucrative innovation” turns out later to be wrong, for commercial and/or technology reasons, or otherwise not worth extensive foreign patenting, such as limited valid claim scope. Also, research scientists are not often trained to do realistic UMC and other engineering cost analysis for taking an invention from the research stage to marketing. PCT filing buys extra time before committing to extensive foreign filing costs.

  2. Amy S. November 16, 2015 1:33 pm

    Invention Evaluator reports include technology, IP and market analysis all in one. For a sample report visit, inventionevaluator.com.