Market research is a standard part of any entrepreneur’s discovery phase. What you may not realize, though, is that you are simultaneously building the groundwork for a prior art search.
In order to receive a patent, you have to have a unique idea that is not already secured by another inventor. A prior art search is meant for entrepreneurs to understand the existing landscape of known ideas and analyze where their work fits in.
As a startup founder, doing your own prior art search can provide valuable insights into the uniqueness of your concept and its position in the marketplace. It doesn’t cost a penny to use the following tips and resources to begin your path to a prior art search:
1. Build queries and dashboards to track prior art. — lens.org
As companies innovate faster than governments regulate them, it’s never been more important to have a real-time view of how competing ideas and the marketplaces they inhabit are evolving. One of the most powerful tools on the internet for building queries and dashboards to track prior art comes from Lens.org. The power to save queries and dashboards around your searches reduces duplicate efforts and time wasted traversing an infinite set of browser tabs.
With support from notable organizations including the Rockefeller Foundation, United States Patent and Trademark Office, and the Bill and Melinda Gates Foundation, the site is free to use and includes some of the most comprehensive filters available. Use flags like “has funding” to elevate the search experience. While your idea must ultimately be unique to obtain a patent, seeing which ideas are resonating with the venture capital community doesn’t hurt.
2. Leverage Google, Google Patents and Google Scholar.
Your favorite search engine does more than crawl websites; it can also search government databases and scholarly literature. Google and its sibling search engines, Google Patent and Google Scholar, can search a host of nonpatent literature as well, such as published articles, manuscripts, applications and software.
Google Scholar facilitates the search for scholarly articles (that is, nonpatent literature) that may also include prior art related to your invention. A common misconception is that only prior patents are prior art. In fact, scientific articles, information disclosed on websites, presentations at conferences and even brochures constitute prior art as well. Prior offers for sale and public uses of your invention also constitute prior art.
Having helped clients around the world, I love that the Google Patent search gives me the ability to segment my searches based on keywords, assignees, dates and so on. Excluding certain categories that are not likely to include prior art from my search reduces the amount of irrelevant content that is returned.
3. Search the U.S. and EU patent office databases.
Perhaps the best part about the U.S. and EU patent office search engines is the fact that they offer corresponding documentation on how to effectively search. These resources should be one of your very first stops because an unfocused prior art search can take an incredibly long time.
In the European Union, subject matters are consolidated into “classifications” to offer a drill-down approach to searching for related materials. As you might expect, a multilingual search further deepens your ability to find pertinent material. My favorite resource on the EU page is the pocket guide to prior art search. It’s a lot of information consolidated into a simple, easy-to-understand four-page white paper.
The United States Patent and Trademark Office (USPTO) offers a 38-minute web-based tutorial on how to perform a prior art search. I highly recommend taking it after working your way through traditional sources like Google. It’s important to take in other pieces of source material the site offers, such as frequently asked questions on patents and what to expect when dealing with the USPTO. This will give you a great overview of what to expect for the entire process of filing for a patent.
4. Attend World Intellectual Property Organization (WIPO) forums.
A self-funded agency of the United Nations, WIPO takes a global approach to intellectual property by holding forums that result in best practices for patent offices used around the world. The organization offers a vast array of conference programming, workshops and seminars.
The best part about using WIPO in your prior art search is the ability to develop dashboards to track your searches over time. It’s a great alternative to Google alerts for those who prefer data visualizations. Its patent search engine, Patent Scope, is also a strong tool for international entrepreneurs to traverse prior art around the world.
5. Home in on your desired search criteria.
The honest truth is that a prior art search involves a significant amount of searching. The only way to not get caught in an infinite loop is to home in on your desired search criteria. Searching for broad keywords such as “mobile apps for bitcoin” would cause more frustration and provide little benefit in the patent application process. Is there a specific industry you want to serve? Is your idea related to improving on a certain aspect of the mobile blockchain space?
The more precise your search criteria, the easier it will be to search against the wealth of information available, which will later help your patent agent to draft a meaningful claim that is appropriate to your invention. The final patent examination process with the U.S. Patent Office will also be less drawn out and will result in a higher-quality patent.