In this video, Matt will show you some of the reasons why you'd want to do a patent search, some of the free online tools you can use to do patent searching, as well as a few basic techniques to get you started.

Transcript

Welcome to IP Australia's introduction to patent searching. My name is Matt and in this video, I'll show you some of the reasons why you'd want to do a patent search, some of the free online tools you can use to do patent searching, as well as a few basic techniques to get you started.

If you need to re familiarise yourself with the basics of intellectual property, we suggest you have a look at our website or check out one of our IP 101 webinars. There are links in the description.

Firstly some assumptions. The Australian patent system can be an uncertain and daunting journey for the uninitiated. For first time applicants engaging an attorney can increase the chances of success. So for the purposes of this video I’m going to assume you want to search in preparation for meeting with your patent attorney.

Let’s say you have invented something or you’ve come up with a new business idea. Searching is a great initial step to take, to make sure your idea is new. If you are considering protecting that invention with a patent, searching is also a way to save time and money by giving your attorney an idea of how your invention fits in the market place. And if you find existing patents or patent applications that are similar to your product or service, you can then consider your options for patent protection.

There are generally two reasons why people would do a search. To see whether your invention or idea is actually new, and to make sure you’re not going to infringe on someone else’s IP. After all, the last thing you want to do is invest in an idea that is owned by another business. That could be an expensive mistake!

The kind of search a patent examiner or patent attorney will do is a specialised function which takes training and experience. These searches are intended to be the legal basis for arguments for, or against, a patent application. But the kind of searching you are going to do will be aimed at giving your attorney an idea of how you believe your invention sits alongside any competing products or services.

So where are you going to search? Before we move to searching patent databases, we suggest starting with Google. Search broadly as though you were looking to buy your product. That might mean key words describing the product or service, or even searching around the problem your invention solves. Look for promotional documents or research and scientific literature relevant to your product. Search your potential competitors and see how they describe what they do, this will also come in handy in a minute.

Remember, you’re basically trying to find search results that show your product or service *ISN’T* new. When you’re happy that your invention isn’t already being made or sold by someone else, it’s time to focus your searching on patent databases.

One of the easiest tools you can use is Google Patents. Google Patents has the same basic interface as a normal Google search, so all it needs is a few keywords to begin.

One thing to keep in mind is that Google Patents will not include results from IP Australia’s database. So, if you're just interested in finding Australian based results, then Google Patents isn't going to be the option for you. However, if you’re looking to get a global view of the market you’re entering, it could still be worth a search.

Another website I want to highlight is lens.org. As with Google Patents this is a free tool which allows you to search databases across the world. Where Lens.org really differs, is it does include Australian results. The interface is a bit trickier than Google Patents, however, because it covers all of those databases across the world it is a very powerful tool and well worth a look.

And finally there’s AusPat, produced by IP Australia as the dedicated search tool for the Australian patent database. While you will only find Australian patents and applications, it does have the advantage of being able to look at the entire case history for any of those results. Put basically, when an examiner reviews a patent their search history is made available for you, so you can follow the trail if it’s of interest. This can be especially useful if you are searching to see how the local market looks, or just want to keep an eye on your competitors to see how their applications have fared.

But what are you going to be looking for when searching?

Usually when you do a search, you'll be searching for the thing that makes your product unique or special compared to everyone else's. This is known as the inventive concept. This is going to be what you should be focusing your search on so that you get the most useful results.

Again, you’re looking for anything which proves your invention isn’t new. Look for results which contain something that is the same or similar to your invention. Look for results where the products or service solves the same or similar problem to your invention.

Patents or patent applications that are pending or in force will be the most relevant to avoiding infringement, and I’ll tell you how to check that shortly. Location is also important, it can indicate which countries are or aren’t covered by the patent.

And finally, pay attention to the claims of these patents and patent applications, as they will set out the legal boundaries which will help your attorney determine whether infringement may occur.

But let’s step back to your inventive concept and think about how you describe it in words.

Let’s get creative with synonyms. Make a list of different ways your invention can be described. Take this example. This could be a soft drink can, but there are many other ways that I could describe the same product. It could also be a beverage container or a liquid holding receptacle.

Because there is no guarantee that other people have used the same words that you have, the more alternatives that you can come up with, the better your chance of finding relevant results. Remember to think about other cultures too, like how Americans call soft drink, soda.

Now, let's have a closer look at Google Patents and see what you can expect when you start searching. Let's say that I’ve invented a new product, a soft drink can holder which has coolant inside. To begin my search, I’ll go to Google Patents and type some keywords. So the first keyword set I'm going to try are, soft drink can, and holder, as well as coolant. You can see that there are not many results because I've only asked for a soft drink can, and a holder, and a coolant. So it's a pretty restrictive search.

Remembering what we said earlier about using synonyms, let's try a few alternatives and see what happens. So, let's try beverage, container, coolant as well as sleeve, or holder or pocket. Now you can see we've got plenty more results because we've used a broader set of words.

Now I just want to pause there and talk about the mechanics of what I just typed. You’ll notice I used some +, “ and some OR and some ()s. All of these have special meanings when you’re using Google. I won’t go into them all now, but there is a link in the description to a useful Google help page.

 

Now let's click on one of these results to see what info you can expect. The first thing that you will notice is a title and an abstract. The abstract will give you a brief summary of what this result is all about and are usually enough to explain an invention. Next you'll find some images which you can click on to expand for a better look, followed by a classification. We'll get into that classification in the moment.

The other area I want to highlight is here on the right hand side which contains what we call the bibliographic information. But in simple terms, it’s like the admin info that every patent or application has to have. It starts off with the application or patent number followed by the status, which in this case tells us the patent has been granted in the US. It has information on the inventors or owners and some important dates, including the priority date.

If we scroll down the page you'll see the description. This is the meat and bones of the application, which details exactly what the invention is and does. It is here where you’ll find the excruciating detail on how the invention works. And here on the right we have the claims. The claims set out the legal boundaries of the protection for a patent. They have to be clear and concise and distinguish the invention from what is already known.

So that's what a result looks like. Now we've had a look at that, let's go back to the search results to see how we might refine our search.

In Australia, we use a scheme called the IPC, or International Patent Classification. If you go to Google and search IPC patents, you’ll find more info. Or there is a link below to info on WIPO’s website. Put simply, the IPC is an index of around 70,000 entries for sorting patents into different areas of technology.

By using the IPC reference you can whittle down your results to those which are more relevant. And if you use it in conjunction with the synonyms we covered before, you should be able to find the results you are after.

Now, it's a little hard to navigate initially so a good place to start is, again, in Google patents. By looking at our search results we can see what IPC references are used for similar inventions. In this result you can see the IPC reference - B 65 D.

If we then go back to our search screen and refine using our IPC reference we get just 239 results. Much more manageable compared to the 3000 results we had before. The other way you can find your IPC mark is by the search bar on the IPC page. If we type in the ‘container’ we'll get some suggestions and we can look at to see if they are relevant.

So hopefully I’ve given you enough to start your own patent searches. But then what do you do with what you find? To put it into context, these search results are going to be useful when you meet with your patent attorney.

To get the most out of this meeting, you want to take a number of things. Firstly, take all of the details about your invention. Naturally, this will give your attorney the best understanding of what your invention is all about.

Take along all the search results you think are relevant. This will give your attorney a head start to understand what your industry looks like and how your product fits in that landscape.

Finally, take along your business plan. Your patent is only one part of your overall business operations. By looking at your business plan, your attorney will be able to give you advice to best meet your business expectations, and your business objectives.

Thanks for watching and make sure to check out our YouTube channel for other videos like this. If you want to find more information on intellectual property matters, don't forget to have a look at our website at ipaustralia.gov.au.

Last updated: 
Wednesday, September 5, 2018