Los Angeles patent Brainstorming Keywords for patent search
A patent search is a review of the prior art to determine the likelihood that the United States Patent and Trademark Office (“USPTO”) will grant a patent to an invention. The patent search goes by many different names such as patentability search, novelty search or just plain patent search.
The United States Patent and Trademark Office publishes a “how-to” instruction on conducting an online patent search at the USPTO website. The first step in conducting the search is to brain storm a list of potential keywords related to the invention. However, the online patent searching capabilities on the USPTO website is very simplistic.
For example, the search function does not account for synonyms. Synonyms are different words that mean the same thing. One prior art document may exclusively use one form of the synonym, whereas another prior art document may exclusively use a second form. A search for “pupil” will not find documents that exclusively use the word “student”, and vice versa.
Moreover, the search function does not account for legalese. Many patent documents are prepared by patent attorneys who may describe the invention utilizing terminology different than those skilled in the art. Additionally, patent attorneys are attempting to broaden up the patent application and not limit the meaning of a term unless necessary. For example, patent attorneys may utilize terms such as “a rotating member” instead of “axle” to describe the various components of the invention to maintain the breadth of the patent application.
To mitigate missing relevant prior art references due to the limitations of the search function, the search process is an iterative process. After you find a few relevant references, additional search terms and ways of describing the invention will come to mind during your review of these references. A good initial set of keywords will include industry specific terminology, generic terminology, and a bit of legalese. As you review relevant prior art documents, the list should grow to include a comprehensive set of keywords.
James Yang is a Los Angeles Patent Attorney. He advises companies on intellectual property protection strategy including patents, trademarks, copyrights and trade secrets. He welcomes clients in the Los Angeles area to contact him.
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