When creating a new medical device, one crucial step is often overlooked: conducting a patent search. A patent search is an integral part of the patenting process and is usually part of a well-thought-out patent strategy. This blog post aims to shed light on the importance of conducting a thorough patent search and provide a step-by-step guide on how to conduct one effectively.
Importance of Conducting a Thorough Patent Search
Before delving into the “how,” let’s first understand the “why” of conducting a patent search.
Assessing the Novelty and Non-obviousness of Your Invention
A patent search allows you to check what parts of your medical device invention are truly novel, one of the key requirements for patentability (35 U.S.C. Sect. 102). You can also assess whether your invention is non-obvious (35 U.S.C. Sect. 103), another critical criterion for obtaining a patent. The search helps you determine which aspects are already known and can save you time and resources.
Understanding the Competitive Landscape
Conducting a patent search also helps you understand the landscape of your invention’s field. It can provide insights into the technology trends, key players, and the potential obstacles you may face.
Formulating a Strong Patent Application
Lastly, a thorough patent search can help you formulate a strong patent application. By understanding the existing patents, you can strategically define your claims to avoid ‘stepping on’ the claims of existing patents while still covering the unique aspects of your invention.
Conducting an Effective Patent Search: A Step-by-Step Guide
Conducting a thorough patent search may seem daunting, but by following these steps, you can perform an effective search.
Step 1: Clearly Define Your Invention
Start by clearly defining your invention. Understand the key components (structures), functions, and features (advantages) of your invention. This will guide you in identifying the correct search terms and classification codes for your search.
Step 2: Identify Relevant Keywords and Classification Codes
Next, identify relevant keywords and classification codes related to your invention. Keywords could include technical terms related to the device’s function, structure, or application. Patent classification codes categorize patents based on their technical features. The U.S. uses the United States Patent Classification (USPC) system, and globally, the International Patent Classification (IPC) system is used.
Step 3: Begin Your Search
Once you determine your keywords and classifications, you can begin your search. Use databases like the United States Patent and Trademark Office (USPTO) database, the European Patent Office’s Espacenet, or Google Patents (recommended). Google Patents has a free-form search interface that allows easy and efficient searches. Initially, try a combination of keywords and see what results you get. Read the references found in the search, extract more exact keywords found in the references, and repeat. Perform these steps iteratively until you begin to see the same references. You may also incorporate patent classes into your searches to restrict the search to specific subject matter.
Step 4: Review Patents Thoroughly
As you receive the search results, review them to identify references that have one or more of the elements of your invention. If a single reference has all the elements of your invention, it is considered ‘Anticipated’ under 35 U.S.C. Sect. 102. However, if the elements of your invention are described in two or more references, and it is obvious to combine them into your invention, your invention would be rejected under 35 U.S.C. Sect. 103 as being ‘Obvious’ in view of the cited references. The vast majority of rejections have been obviousness-type rejections. Any part of publicly disclosed references may be used to reject your invention. Therefore, if a patent is cited as a reference, pay attention to the disclosure of the entire patent including the abstract, claims, and drawings.
Searches are performed for both an offensive goal of a) determining what is already known for drafting a patent application to acquire patent protection on an invention and also for a defensive goal of b) avoiding patent infringement litigation by producing a product that falls under the claims of a patent of another entity. This second goal is usually referred to as a ‘Right to Operate’ study or a ‘Patent Clearance’. The claims defines the scope of the patent protection. If your product meets all of the elements of at least one unexpired claim of another entity, you will infringe that claim, and be liable to that entity for patent infringement.
Step 5: Look Beyond Patents
Remember, patent databases are not the only sources of prior art. Your invention must be novel and non-obvious concerning any publicly known technology, not just existing patents. So, also check non-patent literature such as research papers, conference proceedings, product catalogs, and advertisements.
Step 6: Document Your Findings
Keep a record of your search methodology, the databases you used, the search terms, and the patents you found relevant. This will not only help you organize your work but may also be valuable when discussing your findings with a patent attorney or in future patent litigation.
Sometimes the most valuable information of a search is where elements of your invention are not found.
If you lost your car keys just outside of your house, you could search forever inside your house and never find them. Therefore, it is good to keep a record of which rooms were searched. Once all rooms have been searched thoroughly, you can move on to a different area to search.
Making the Most of Your Patent Search
Conducting a thorough patent search with organizations like the USPTO is an important step in the patent process to protect your medical device invention. It can save you from unwelcome surprises and focus/strengthen your patent claims.
Remember, while the process can be time-consuming, the insights you gain are invaluable. Also, while you can do a preliminary search yourself, consider engaging a patent professional or a search firm for a more comprehensive search. They have the expertise to navigate complex databases and interpret patents, which can provide a more accurate picture of the patent landscape related to your medical device.
