Because patents are only granted by the United States Patent and Trademark Office (USPTO) on the federal level, and because there are no common law patent rights, knowing how to conduct a patent search on the USPTO website is particularly important. Furthermore, unlike copyright and trademark rights, which are purely territorial in nature such that conflicting intellectual property is limited to the United States, patents are held to an international standard. In other words, patents must be “novel,” and for a patent to be novel it must claim an invention that cannot be found anywhere else in the world. As a result, the patent search that one must conduct will be international in scope, whereas a trademark and copyright search could be limited to the United States without overlooking critical preexisting rights that could block your claim to that intellectual property. Bottom line, in addition to spending more money on patent prosecution and more time awaiting the outcome of your application, you will need to do a lot more research in order to obtain a patent.

That said, a patent search has to be conducted one step at a time, so don’t let the wide scope of the search overwhelm you. The first step in the patent search is to brainstorm keywords that relate to the purpose, use and composition of the invention. These keywords will allow you to isolate and identify other inventions for which patents have already been issued and which relate to your proposed patent. Once you have identified a sufficient number of keywords, you should look up each of them in the Index to the U.S. Patent Classification so that you can identify what classes and subclasses would be relevant to your application. This can be further verified by using the Classification Schedule of the Manual of Classification, and by reading the Classification Definitions, which will allow you to verify the scope of the classes and subclasses and whether your proposed patent fits. Bear in mind, you will need to conduct this due diligence comprehensively, and like a lawyer would; that means reading the citations, and “see also” references, and following as many as possible to ensure comprehensiveness.

Next, you will need to search through the patents that have already been issued by the USPTO as well as the Published Applications databases by “Current US Classification.” If you come across a patent or application that seems applicable or even related to your proposed application, you can access the full-text of the patent or application to see how closely related it is to your proposed application. At this point, you should create a list of potential patents and/or applications that could cause problems for you later on in the patent application process. The list is particularly important for the next step in the process; reviewing the claims in all the relevant patents or patent applications. Claims are the legal side of a patent, as they lay claim legally to certain aspects of an invention, process, etc. Because this may require the assistance of an attorney later on in the process, it is a good idea to compile this list in order to reduce the amount of billable time an attorney will have to spend on the patent search process. Again, when doing this be sure to pay attention to all references and to note the “U.S. Cl.” And “Field of Search” areas for additional classes and subclasses that you have not yet thought to search.