In “Patent Searching an Effective Tool for Competitive Intelligence,” Vinod Singh makes a very good case for why patent searching should be left to the experts – professional patent searchers.
There are many reasons to search for patents (Mr. Singh lists 14) including, but certainly not limited to:
• Determining if a particular invention is unique;
• Determining if an invention infringes upon the intellectual property rights of others;
• Gaining insight into the latest ideas in any technical area of interest;
• Monitoring the competition;
• Determining who the competition is;
• Exploring the science or logic behind inventions; and
• Determining intended uses of a particular invention.
Depending on the purpose for the search – it may be possible for a non-professional to do the job. But, if you are looking for the most complete information for determining patentability, validity, and/or infringement analysis, Mr. Singh gives pretty compelling evidence that a patent search is not for amateurs. He discusses detailed steps -at least 13- that he considers essential for a complete search along with the requirements that a skilled searcher possess including knowledge of search procedures, database limitations, technical tools, and software.
In an early step of the search process, Mr. Singh recommends “[r]ecord the search words on a page in a project notebook and add other words as they come to mind or encounter them in other patents. Usually the word list becomes separated into groups of words covering different aspects of the invention."
I strongly agree with this advice. When using search tools, it is easy to follow a number of different paths and it is important to document the keywords, so you can revisit them using other search engines/tools. In addition, you may find the terminology for certain products or technologies varies significantly in different parts of the world. Sometimes this is as subtle as using acronyms rather than complete word descriptions. Also, your client or your client’s patent may rely on certain keywords to describe their invention, but others in the industry may use a variety of other words. It is important to make sure all relevant keywords are incorporated in your search – individually and in different combinations.
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