Here is my advice: when it comes to prior art searches for novice inventors, don't actively engage yourself in a patent search too early.
Instead, ask the inventors to produce the first piece of prior art before you even start looking more closely at their invention.
The main reason for doing so is that you can use this step to find out where your inventor comes from: do they want you to do all the work when it comes to patenting their invention? And are they willing to pay you for doing so?
Or do they enjoy learning new things and what is necessary when patenting inventions? Believe me, it is far more successful and greater fun to work with such smart and informed inventors.
Step #1: Google Patent Search
Here is a 2 minutes short video that shows the basics of a Google Patent search:
You can download the video to your own computer (click here) if the above Youtube video does not work in your country.
There may be better-explained videos about using Google Patents, but the one above is the shortest.
This will get your inventor on track, within only 2 minutes watching.
After watching the above video, the smarter inventors can right away apply that knowledge for doing their own Google Patent searches.
Be very careful if an inventor does not pass this initial test. You may find yourself wasting your valuable time with the wrong people!
Step #2: Backward/Forward Search
If the Google Patent search result that comes back from your inventor is close enough to their invention, you can tremendously increase the quality of the search result by running it through my Backward/Forward Patent Search Widget (click here).
In the case of the resulting patent US9386913B2 in the video above, that will get you 25 additional patent publications that have been cited during examination of all members of the patent family of the US9386913B2.
You can compile links to these 25 + 1 patent publications into a pdf document, together with abstracts and figures, and send this to the inventor. The inventors will be amazed.
Here is the pdf document: PatentPickerLite_16538935112506 I call it a "Patent Picker".
You can ask the inventor to identify those 3 patent publications that come closest to their invention and to highlight the common elements and the differences between each one of these 3 patent publications and their invention.
Compiling the Patent Picker from their search result can be done in no time. And it shows that you know what you are doing because the result will necessarily be good. The Backward/Forward search tactics are used by the examiners of the European Patent Office, and they have a good reason to do so.
If you don't like the IP-Lawyer-Tools template for the Patent Picker output then you can upload your own template. That will make your feedback look even more professional because the Patent Picker carries your firm's trade dress.
Step #3: Ask Your Inventor To Describe His Own Invention
Tell him to use the language of the prior art documents that they found earlier if they are not sure about the terms to be used.
Tell him to start with the figures of the prior art documents that they found earlier if they are not sure about how to draw figures of his own invention.
Here is a template of a questionnaire that you can give your inventor: Questionnaire Invention Disclosure 210720
Once you have this questionnaire back, filled out by your client, you can initiate two important things:
- file a provisional patent application
and - initiate a much better prior art search
You should have your sell sheets for these solutions ready!
Martin "Prior Art" Schweiger
IP Lawyer Tools by Martin Schweiger
Originally published 30 May 2022
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.