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It’s true – I was once new to patent searching, blithely dumping keywords into Google and saying things like “IPC code? What’s that?” Ah, youth. Fortunately, before turning me loose on the unsuspecting public, some extremely patient search experts worked with me on the major concepts of patent information.
And what is the biggest challenge for a new patent searcher? In my view, it’s understanding the legal concepts behind the organization of patent information. Let me go through just a few of these ideas on a very basic level. By the way, I am not a lawyer and none of this post constitutes legal advice.
First, patents are legal documents and must be read as such. Sure, this seems like an obvious point, but trust me, it’s more complicated than it sounds. During an infringement or validity study, for example, new searchers often stumble because they read patent claims too literally in view of the drawings or the specification, and do not think about the wider, broader implications of the claim language. See the Infringement and Validity best practices articles on Intellogist to gain a little more understanding of these complex, difficult search types. And if you don’t come from a legal background, double and triple check your search assumptions with the search requester before proceeding.
As legal documents, patents are only enforceable in the legal system where they are granted. On a conceptual level, this seems obvious. On a practical level, this means an information explosion: the same invention can be described by dozens of different patent applications, each published in a different country (or regional authority). And don’t think that the Patent Cooperation Treaty (PCT) solves this problem for you – WO/PCTs are simply applications that are on their way to becoming national patents someday (perhaps in dozens of countries). As far as you’re concerned, those WO (Patent Cooperation Treaty) and EP (European Patent Office) collections, while important, are not substitutes for searching in the national patent collections.
To minimize the complexities of applying for patent protection internationally, many of the major patenting countries of the world signed a treaty known as the Paris Convention. This agreement introduced the concept of priority, which means that after filing a patent application, the applicant has 12 months to file in any other Paris Convention country and the original date of filing will be honored. (Again, I should point out that this is not legal advice.)
To group legally related documents together, the patent information community has adopted the concept of patent families. Among other things, this convention make it easy to find out where else the patent applicant may have applied for protection, and to trace the priority. Patent families are a fluid concept; there are many different ways to define them. If you think you know what a patent family represents, let me ask you this follow-up question: do you understand the difference between an INPADOC and a Derwent patent family? If you answered no, I strongly recommend reading up on this topic – we have put together an introduction to the topic on our Patent Families glossary page.
All of these legal concepts affect the way patent information is organized, both within the structure of a patent document (specification vs. claims), and in its relationship with other documents. These concepts affect the way we search patent information on a very practical level.
To take patent families as an example, if you needed to search a patenting authority for which English-language records were not available, one quick (and incomplete) way to do so would be to run a keyword search in the English-language authorities, and limit the results to only those which contain a family member from the country of interest. This method would not capture any documents without English-language family members, and of course, a native-language searcher would be needed to perform a comprehensive search. However, it might give you a quick idea of what you can expect to find in the non-English collection. Sneaky strategies like these can allow us to use the relationships between patent documents to our advantage.
Since I can’t be comprehensive in this blog post, feel free to expand on the legal concepts that affect how we search patent information in the comments section!
This post was contributed by Intellogist Team member Kristin Whitman.