Patent searches: how to define a good search strategy

Currently, the vast majority of patent agencies offer a wide range of services in all fields of Industrial Property. A differentiating characteristic, of great importance to be taken into account due to its impact on the final quality of the services, is the capacity to carry out exhaustive patent searches, understood as not only the possibility of accessing free or commercial patent databases, but also the capacity to design, optimise and implement a suitable search strategy in accordance with the needs and objective of the search in hand.?

A strong ability to approach a patent search is essential, since most of the work, such as conducting patentability studies, validity studies or infringement risk analysis, must be initiated on the basis of the results of this first stage. So the quality of a patent search is a prerequisite for good work overall.

It is important to bear in mind that it is by no means possible to guarantee the exhaustiveness of a patent search. Thus, any properly conducted patent search should be considered as an important means to reduce uncertainty before a decision is made, but it can never achieve complete certainty. It should not be forgotten that patent applications are usually secret for 18 months, making it impossible to retrieve the most recent ones.

In this article, we focus on the importance of patent searches for those seeking to protect their innovations, to avoid conflicting with the rights of third parties in an increasingly competitive market, or even to have an overview of a given technology.

First of all, it is interesting to take into account that there are different types of patent searches, depending on the needs and objectives of the targeted individuals or companies. Broadly speaking, the most common types of patent searches are as follows:

I. Patentability

The main purpose of a patentability search is to identify the prior art relevant to the technology for which patent protection is sought and the content of which could affect the patentability of the invention. The aim of the search is to help the agent identify the prior art applicable to the proposed invention in order to establish whether the invention meets the requirements of novelty and inventive step. In other words, a patentability study is essential in order to obtain the best possible protection from the data provided by the inventors. In this search, not only published patent documents should be retrieved, but also scientific literature, such as scientific articles, doctoral theses, conference abstracts and posters, and any other publicly available documents, such as images and videos, should be retrieved, so this search cannot merely be limited to patent databases.

II. Validity

This type of search is carried out to assess the validity of a patent or patent application. It aims to discover prior art that may not have been considered during prosecution of the patent and that may call into question the validity of one or more of its claims. This type of search involves a thorough examination of prior art, including patents, patent applications, technical literature and other relevant documents.?

III. Freedom-to-Operate

A Freedom to Operate ("FTO") search aims to identify third party patents in force, in the territory or territories of interest, that pose a risk of infringement by the performance of any industrial or commercial act on the product or technology. The final objective of this type of search usually has a high economic impact, so it is often complemented with validity searches, in case the results of the FTO searches include patents that could be conflicting from an infringement point of view.

IV. Prospective searches

Prospective searches are carried out to identify the latest developments, trends and technical advances within a particular technical field. The main objective of such a search is to obtain an overview of existing patents in relation to a specific technological area or domain, to identify the most active players in the technology, the main territories in which the technology is most actively protected, etc.

How to define a good search strategy

In the definition of any search strategy, the first thing to consider is the objective for which the information is needed (patentability study, freedom-to-operate, state of the art, etc.). There are important differences between the different types of searches, but there are also a number of common steps, which are discussed below.

Stage 1. Understand the technology?

Before starting any approach to search, it is necessary to understand the technology. It is essential to have an overview that allows in later stages, among other objectives, to extrapolate the search concepts and identify the most appropriate databases and type of searches (e.g. if a structural search is required by Markush formula, sequences, non-patent literature, etc.). An in depth knowledge of the technology enables a good design of the search strategy.

Step 2. Identify relevant keywords

The expert should identify relevant keywords and their synonyms to avoid missing relevant information. Generally, this stage will not take place in a single phase, but most likely, after a first review of the results, new keywords will emerge that will need to be added to the strategy. Thus, the keyword list should be a "living" list, subject to modification and optimisation, which allows the search strategy to be improved.

Another source of search terms is the classification codes that patent offices use to classify patent applications. The identification of relevant codes can be of great relevance, since their use can allow to focus searches on those documents closest to the technology under study.

Sometimes it can also be very useful to search for competitors and key inventors in the sector. This list of key players can be extracted from the results of preliminary keyword searches, or it may be in the background information of the case.

These complementary searches can provide additional documents that might not have been detected in the initial searches, and which could be particularly relevant.

Step 3. Build the search sequence

Finally, the appropriate strategy must be devised to retrieve the publications of interest. This is possibly the most complex and important stage of the whole process.? This strategy must combine keywords, taking into account the essential concepts and sometimes also using classification codes, in order to retrieve the desired results and, above all, to avoid the loss of relevant documents.?

It is important to bear in mind that sometimes it may be necessary to approach the project using different databases, which in one way or another complement each other. The expert must have a high level of knowledge of the databases used, both in terms of their coverage and search fields, as well as their retrieval language.

Generally, a comprehensive search strategy involves constructing different search sequences that allow the information retrieval problem to be tackled from different approaches to achieve maximum completeness.?

Obviously, there may be other steps that can help to improve the search strategy, which should be designed and adapted according to the specific case we are facing.?

In conclusion, it is highly recommended that patent searches are carried out by experts, with extensive knowledge of the technical field, ideally with a background in patents and with extensive experience in designing search strategies, and a high level of knowledge of the different patent and non-patent literature databases. Ultimately this allows the expert to tailor each search to meet the objectives set out.

At ZBM we have a great deal of experience in carrying out searches, and it is worth highlighting the extensive experience of some of our technicians, who prior to their dedication to patents, were professionals in scientific and patent searches, and have been carrying out this type of work for more than 20 years.

By José Ignacio Bonilla