Intellectual property searching is performed for many different reasons: to make an initial determination of whether a patent application should be filed; to conduct an investigation in determining what others in a particular field of technology are doing; to avoid a patent infringement action, or to avoid the rejection of a trademark application are but a few examples of why searching is performed. A comprehensive list of various types of searches is provided to assist you in making a determination of what type of search you may require relative to your business endeavors. You may also retain our firm to conduct any of the searches: patent searches; trademark searches; and copyright searches discussed.
Once a determination is made as to the purpose of the search, one must gather the necessary data to conduct the search, determine which and what type of database needs to be searched, develop a database searching strategy, and then analyze the results of the search to come to a definitive determination. Click here to see how to do a simple patent search. We have also provided you with a comprehensive list of the various types of searches, a list of various databases, certain strategies, and analyzing techniques to assist you in this task. While this resource is sufficient to conduct a comprehensive search, we recommend the hiring of the services of a professional as comprehensive searching is a developed skill that takes training and practice.
A preliminary Patentability search is a limited prior art search which is performed prior to undertaking the expense of filing a patent application. The purpose of this limited search is to make an initial determination of whether a patent application should be filed. Such a search may also be necessary if a client desires to have the examination of a patent application accelerated. Preliminary Patentability searches are typically, but not always, conducted by professional patent searchers who are familiar not only with the patent classification system but also with the art group examination staff in the United States Patent and Trademark Office.
Database Source: There are numerous databases that allows full text searching with review of drawings. Searching may be in Boolean form, manual form or by patent number, depending upon where a patent application is to be filed. Patent offices around the world are coming on line to provide full searching capabilities. Visit these sites and you will find a wealth of resource information.
United States Patent and Trademark Office (2.9 million patent documents)
European Patent Office (29 million patent documents with cross reference to individual countries)
Searching Strategy: Define the field of the invention, narrow the field of the invention to the field of novelty (Subclasses within identified field) and then narrow the field of novelty to the subclass at the point of novelty. Two of the primary reference documents available to accomplish this task are provided on line and are called the Manual of Classifications and the Examiner Handbook to the US Patent Classification System. These documents should give most people a good start. For example, here is an excerpt from the Explanation of Data found in the Index to the US Patent Classification System: "[T]he Index, is intended as an initial means of entry into the classification system. The Index should be particularly useful for those lacking experience in using the classification system and those unfamiliar with the particular terminology under consideration. It is an alphabetical list of subject headings referring to specific classes and subclasses of the classification system. There are continual changes in the classification system. New classes and subclasses are established due to new developments in science and technology, and old classes and subclasses are abolished when rendered obsolete by technological advances. In addition, changes to classes and subclasses may result from an effort to streamline and update the definitions. This edition is current as of the date indicated at the top of the web pages. A list of utility and design class titles is available in the Manual of US Patent Classification. Searchers may find it useful to scan the titles for topics which may be of interest to them. As a first step in locating a field of search, the searcher should look in the Index for the term that best represents the subject matter of interest. If a match is not found, the user should look for terms of approximately the same meaning, for terms of either broader or narrower scope, or for terms which represent a different approach to the subject; i.e., the essential function or effect of the device or the use or application to which the device or composition of matter is put. On finding the identifying numbers of possibly pertinent classes and subclasses in the Index, the user should refer to the Manual of Classification and ascertain, from among the existing choices, the precise classification (that is, the class) of the subject of interest. The user should start with the first "mainline" subclass; i.e., any subclass depicted without indents and presented in all capital letters, in the selected class, and proceed from one mainline subclass to another until the first one is found that appears to include the subject matter being investigated. Next the user should scan all of the subordinate subclasses indented one place to the right under the selected mainline subclass until the first one is found that indicates inclusion of the subject matter being investigated. Using this same technique, the searcher should scan the subclasses indented one additional place to the right under the previously identified subordinate subclass until no further levels of indentation are available. Whenever doubt arises as to the proper subclass choice, the user should consult the classification definition for the class under study. The Classification Definitions supplement the Manual of Classification in that they contain detailed definitions and illustrations of the kind of subject matter that can be found in each class and subclass, the lines of distinction among classes and subclasses, and references to other classes and subclasses having related subject matter. Subject headings in the Index are not an alphabetical inversion of the Manual of Classification. They are a subjective determination of relevant terms, phrases, synonyms, acronyms, and occasionally even trademarks that have been selected over the years as the best identifying description of products, processes, and apparatus of patent disclosures. The Index contains product-related entries, whereas the Manual of Classification is descriptive or nonspecific. For example, the Index entry for phonograph record molding apparatus is reflected in the Manual of Classification as a "press forming apparatus having opposed press members." Some effort has been made to index current vocabulary usage when the classification system may contain technically general language; e.g., "water bed" or "air mattress" for the concept "fluid-containing mattress." The Index is arranged alphabetically with subheadings that can have four levels of indentation. A complete reading of a subheading includes the title of the most adjacent higher heading, and so on until there are no more higher headings. Some headings will reference other related or preferred entries with a "(see...)" phrase. They may reference the notes to the Classification Definitions when these notes are particularly detailed or lucid on important distinctions not easily captured in the abbreviated entries of the Index. While measures have been taken to provide accurate and complete information in these web pages, errors and omissions may occur. For a more complete description of the US Patent Classification System and the procedures used to classify patents within the system, please consult the Examiner Handbook to the US Patent Classification System. See the Classifications and the titles.
Analyze Results: Examine each patent document uncovered in the search by reading the patent, examining the drawings and reviewing the claims to determine whether the patent document describes or anticipates your invention.
A search performed relative to unexpired patents that relate to a product to be developed and sold. This type of search is more extensive than a preliminary patentability search, since the purpose of the search is to discover those patents, if any, which dominate a particular field of art to determine whether a proposed system, product, article of manufacture, or process can be used avoiding infringement of issued patents. A right to use search may be preceded by a State of the Art Search which is performed to give an interested party an overview of the state of the present art in a given field.
Database Source: The best database is the United States Patent and Trademark Office that allows full text searching with review of drawings. Searching may be in Boolean form, manual form or by patent number.
Searching Strategy: Employ the same strategies as in a preliminary patentability search.
Analyze Results: Examine the product, process, article of manufacture to gain a complete understanding of the features and processes. Then, examine the claims of each uncovered patent document to determine whether the product, process, or article of manufacture falls within the scope of the claim(s) reviewed in each patent. A claim chart should then be developed, cross referencing each element within a claim against the elements of the product, process, or article of manufacture.
A state of the art search is also more extensive than a Preliminary Patentability Search. In this regard, the state of the art search will include a search of not only patents but will also include publications from technical journals and other relevant publications.
Database Source: Utilize the same database sources as in a preliminary patentability search. In addition, search technical publication resources including technical periodicals at universities and other places of study to locate the most relevant and recently published documents related to the field of the invention.
Searching Strategy: Employ the same strategies as in a preliminary patentability search.
Analyze Results: Examine patent documents and technical publications and summarize the state of the art as applied to the area of technology being investigated.
A validity search is generally undertaken during litigation to find publications, and other uncited references that will invalidate a patent or limit the breadth of the claims within a patent.
Database Source: Utilize the same database sources as in a preliminary patentability search. In addition, search technical publication resources including technical periodicals at universities and other places of study to locate the most relevant documents related to the field of the invention.
Searching Strategy: Employ the same strategies as in a preliminary patentability search.
Analyze Results: Examine each patent document and technical publication to determine whether the invention as claimed in the patent in question is described in another patent document or technical publication having an effective date at least one year prior to the effective filing date of the patent under investigation.
A trademark or service mark search is a preliminary search performed prior to the filing of a trademark or service mark application. The search is performed to determine the availability of a mark for identifying the product(s) or service(s) of the client. Such a search, extends not only to those marks registered with the United States Patent and Trademark Office, but also to the common law marks listed in the various telephone directories of the major cities of the United States. Both domestic and international Trademark Watch Reports are also performed in order to identify improper use of a registered mark.
Database Source: Because the database of trademarks is so extensive and must be updated on a daily basis there are only a limited number of databases that may be viewed without charge. Moreover, the database information that may be viewed, is very limited. For example, the United States Patent and Trademark Office provides a searchable listing of over 2.9 million pending, registered and dead federal trademarks. This databases however, does not cover unregistered names that are in use and found in yellow page and white page directories, nor state registered trademarks or service marks. It is for this reason that the United States Patent and Trademark Office provides the following: WARNING: AFTER SEARCHING THE USPTO DATABASE, EVEN IF YOU THINK THE RESULTS ARE "O.K.," DO NOT ASSUME THAT YOUR MARK CAN BE REGISTERED AT THE USPTO. AFTER YOU FILE AN APPLICATION, THE USPTO MUST DO ITS OWN SEARCH AND OTHER REVIEW, AND MIGHT REFUSE TO REGISTER YOUR MARK.
Because the database is incomplete we do not recommend individuals searching the available databases for available marks. Instead we recommend that you hire the services of a professional, such as our firm, who will conduct the search on a fixed fee basis.
Copyright Searching
The Library of Congress contains a searchable database that includes at least two files COHM and COHS that contain records for materials registered for copyright since January of 1978. Books, sounds recordings, software, drawings, films and sculptures are a few of the items that can be searched. You can go the Library of Congress online searching service or you can retain our firm to conduct any copyright search on a fixed fee basis.
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