Venture Formation (Legal): How to Conduct a Patent Search

A day rarely goes by here without the subject of patents coming up. At a recent board meeting for an incubator we're involved in, the subject came up, and a war waged over whether you need to file a patent or not. Long discussion.

But guess what - you don't actually need to obtain a patent in the beginning. But you do need to understand what's out there, and how you might benefit from a patent.

So one of the first steps in a venture should be to do a patent search. Of course, you can pay an attorney, but you might want to dig in to the data before you hire an attorney. And guess what? There are a bunch of free tools out there:
- Prior Smart (http://www.priorsmart.com/) allows you to search multiple US and global sources, which is really convenient.
- Google Patent Search (http://www.google.com/patents?hl=en)
- The US Patent & Trademark Office (http://patft.uspto.gov/netahtml/PTO/search-adv.htm)
- The European Patent Office (http://ep.espacenet.com/advancedSearch)

A common issue cited by IP attorneys is "finding what you're looking for is hard, because of creative naming and because you don't know what you're looking for."

While this is true, it isn't as insurmountable an issue as you might think, and besides, you're trying to get a handle on the issue, not conclusively prove anything. What you do need to have, however, is a process for conducting your search.

Here's a suggestion from eHow - the first step being self-search:
"Conduct a Self-Search

Step 1:
Determine what type of patent you will be seeking. A utility patent covers the functional aspects of an invention, while a design patent only covers the appearance of an invention.

Step 2:
Access an online patent database such as the ones provided by the U.S. Patent and Trademark Office (PTO) and IBM. Determine the most relevant classes and subclasses for your invention.

Step 3:
Read the class descriptions in the database to see which are relevant to your idea.

Step 4:
Review all patents issued within those classes.

Step 5:
Perform comprehensive keyword searches for your potential invention. Leave no stone unturned.

Step 6:
Assemble your search results into a report that can be readily referenced.

Hire Professional Services

Step 1:
Know your options: a patent agent or attorney or a lay searcher. A patent agent is an individual with some technical training who is licensed by the U.S. PTO to prepare and prosecute patent applications. A patent attorney is licensed by the PTO to prepare patent applications. To find a patent searcher, look in the yellow pages under "Patent Searchers."

Step 2:
Also see Tips below.

Step 3:
Utilize your searcher's services efficiently. Do this by providing the searcher with a clear and complete description of your invention together with easily understandable drawings. The more thorough you are, the better.

Step 4:
Analyze your searcher's response thoroughly."