Researcher Tip #1: Research Before You Research

Want to research a patent successfully?

The secret is in your preparation.

The Importance of a Preliminary Background Search

Before you begin the search proper, begin with a background search about the patent technology and subject matter. Familiarizing yourself with the technology and subject matter area will help you decide where to search, what search terms to use, and which references to select as the most valuable.

A strong background search will support your research in two primary ways:

1. It will help you understand which elements are the most important and where you may be able to find relevant technologies.
2. It will help you identify references that match the patent technology.

Without a clear understanding of the technology and industry, it can be extremely difficult to find relevant references, and hard to recognize when you’ve found a potentially winning reference.

Getting Started

Your goal in a background search is to improve your understanding of the patent technology and patent.

This means that your background search should be based on the elements and claims listed in the target patent. (In Studies on the AOP Connect™ platform, the specific claims and elements in question are listed explicitly in the Study description; Patent Olympiad problems may or may not list claims and elements, depending upon the question objectives.)

In the background search, it is important to expand on the technology and investigate the industry that utilizes the technology and the history of its development. Areas to investigate may include:

• Inventors and researchers in the field of the technology
• Companies and organizations that used or developed the technology
• Journals and databases that specialize in the technology
• Previous versions of the technology, and other factors that impacted the development
• Alternative uses for the technology or related technologies that interact with the invention

If You Have a Target, Use It

The patent is the best place to start because it holds the official definition of the technology. If you have a target patent that you are trying to invalidate, or a draft of an application requiring additional research, start with what you have.

The “Background of the Invention” section usually provides valuable insight into how the invention was developed. Things you can learn include:

• distinguishing features of similar inventions already known in the field,
• disadvantages or shortcomings of those earlier inventions
• comparisons of earlier inventions with the features of the current invention These details can help identify the aspects that make this patent unique, compared to any other previous technology.

Useful Resources For Preliminary Research

The goal of this first step is to learn about the technology. While you may uncover relevant references during the background search, such references are more likely to provide value in guiding your search towards even better results.

Simple Search Engines and Databases

Great for finding simple, succinct technology explanations. They will help orient you to the information.

Encyclopedias and Instructional Journals

These resources are designed to teach the reader about any and all relevant aspects of the technology. You can tailor your background search to your personal level of experience with the technology.

Academic Journals

Academic journals can provide a clear history of the technology and demonstrations of past research.

Product Literature and Company Histories

Product literature and company histories can provide insight into the commercial use of those technologies and any other inventions that may be connected through a company or industry’s research and development.

As you gain knowledge about the technology, you can narrow the focus of your background search based around the details of the search prompt (in the case of AOP Connect™, the Study).

Build Your List of Preliminary Keywords

Background searching is the perfect time to develop your initial keyword list. Your list of keywords drives your search and has a huge impact on whether your results are relevant to search in question.

For studies on the AOP Connect platform, both the Study Description and patent are full of potential search terms. The difficulty is deciding which terms are most important. Background searching allows you to understand what the keywords mean and how they relate to the technology.

Background searching will also allow you to identify keywords and search terms that are not found or used in the patent. In some cases, this includes related technologies that may have an impact on your search. Most frequently, however, your search will turn up synonyms that will prove useful in your search. Background searching will help you to determine if any synonyms are frequently used in place of the keywords from patent (or the Study description for AOP Connect™ Studies).

Synonyms may be based on varying industries, inventors, and even time periods. For example, “smartphone” technology has a historical background in cell phones, mobile phones, land lines, PDAs, etc. The most valuable references may have been invented long before the term “smartphone” was first used.

BONUS TIP

Once your knowledge and confidence in a chosen technical area has grown, try putting your new knowledge into practice.

One way to do this is by participating in informal technical forums online. Technical forums can be a valuable source for various search terms and leads because of the variety and expertise of the users. Technical forums often involve detailed discussions by users who have years of experience in the area of technology, and therefore utilize an array of terminology. They can also be a source for knowledge about potential search resources and tips for understanding a technology’s history.

And Then…On to the Actual Research

As with all skilled endeavors, the time and effort you put into preparation and knowledge building is time well spent.

So get ready, get set…and do the research. Before you search.

Your Tips and Stories?

At RWS and AOP, we are proud that our research community consists of Researchers with a wide range of backgrounds, including technical specialists with first-person industry experience, patent experts with expertise in global patent databases, and research professionals adept at identifying obscure evidence. We believe the members of the Patent Olympiad community are similar.

We all bring unique combinations of skills, backgrounds, and experience to our patent research, and this extends to the way we do our background research.

What are your tips and favourite resources?

Do you have any stories of how background research helped you find a critical piece of prior art?

Have you ever jumped into a search without a preliminary search? What happened?

Do let us know in the comments!