The USPTO Patent Search Strategy: Step 1 — Brainstorming

This is a shallow dive into the first step of the six that the USPTO recommends in how to undertake a successful prior art search.

According to the U.S. Patent and Trademark Office your first step in uncovering prior art related to your idea or invention should be:

Brainstorm terms describing your invention.
Try to think of alternative words to describe your concept. For example, an umbrella could also be called a parasol or a sunshade.

Sounds easy, right? You have your idea and all you need to do is come up with a few terms to describe it. Grab a thesaurus and call it a day.

Well, it’s a bit more complicated than that.

First of all, you need to think not only like an intelligent inventor that is an expert in their field, but like an attorney that is familiar with legal language and regularly drafts patent applications, like a competitor with a similar idea or product, and like a patent examiner who reviews patent applications day in and day out at the USPTO.

Let me explain.

Let’s go with the idea that you created a new type of cell phone. We’ll call it the “MyPhone2024”.

You, being the inventor, are the expert in your area of development, and thus you attribute specific terminology to your invention. Such as:

“cellphone, smartphone, telephone, mobile phone”

And you think a bit more about various elements of your invention and expand this list to include:

“communication device, video device, messaging device, GPS device, camera device”

It’s a good start. Competitors would undoubtedly attribute similar terms to your product. However, they also may include their company and model names. So expand our list with some additional specific search terms:

“Google, Android, Apple, IOS, Samsung, Galaxy”

Great. We’re getting there.

Now you have to think like an attorney. And an attorney tends to draft patent applications in descriptive but broad terms, so as to offer their client (i.e. you, the inventor) the broadest but most reasonable patent protection possible.

They may and often use alternative language that still encompasses your MyPhone2024 invention but may appear to be extremely general.

Let’s take a look at some of the terms used in a patent granted to Apple in 2022:

“multi-functional hand-held device, display actuator, user interface, input surface”

These terms are broad, not restricted to description of a smart phone, per se, but still encompassing of a modern phone’s technology, functionality, and capabilities.

A patent examiner similarly needs to take into account the entirety of this terminology as well when approaching review of a patent application.

So … what does this mean for you, the inventor, when on Step 1 of the USPTO Search Strategy?

Think specific and think general. Include as many terms as possible that reasonably describe the specific as well as the general aspects of your invention. Write them down and prepare for the second step — keyword searching — using the terms you just compiled.

Good luck!