In this stage of the patent search, brainstorm as many keywords related to your invention. The brainstorming session should be inclusive. There will be additional time later during the search process to eliminate keywords that are not particularly useful.
Heteronyms are words that have the same spelling but different meanings. The patent search is a keyword based search. The search function at the USPTO website does not take the context or meaning of the word into consideration in determining whether to include a reference in the search results. If the reference contains the keyword string inputted into the search box, any reference that contains that keyword is included in the search results.
The issue with a simple keyword search is that the one word may be used in different technical fields. References in other technical fields will be included in your search results. The searcher or you will have to wade through the search results to manually eliminate the irrelevant references. This is a waste of time. There is a better way which is to search within a class and subclass <insert link>. For now, during the brainstorming session, keywords are not eliminated but included in the list of keywords.
The word clip has different meanings.
A paper clip is used to hold a stack of sheets together.
A video clip is a short video segment.
Another way to grasp the heteronym concept is to see the same words used in a sentence in two different ways.
Excuse: Please excuse me while I think of an excuse.
Minute: The button was so minute that it took me a minute before I found it.
The keyword list should include industry specific terminology. These terms are particularly useful because their use may be limited specifically to a particular industry. If so, the search results will be more focused on the invention. Irrelevant references within non-related technical fields will be filtered out of the search results.
The patent search searches for patent documents (i.e., issued patents and published patent applications). Many of the documents are written by patent attorneys meaning that the documents are full of legalese. To broaden applicability of the patent application, attorneys may use generic terms instead of industry jargon to describe the invention. Accordingly, the keyword list should include terms that a patent attorney might use to search for the invention. For example, a paper clip may be described as a metallic fastener. The point is that the keyword list should be inclusive and not limited to a particular subset of terms. As you review prior art references, you will think of additional terms. Add them to your list.
Include synonyms in the keyword list. For example, synonyms for clip may include clasp, staple and binder. The patent documents in the databases being search might exclusively use only one of the words but not the other. Hence, synonyms should be included in the keyword list.
As you review the patent documents in the search results, you will begin to understand which terms are important or not so important. The keyword list can be filtered during that time. For now, be inclusive in your keyword list.
Other related blog posts:
1. Overview: How to conduct a DIY patent search
2. Basics of a DIY Patent Search
3. Brainstorming keywords for the DIY patent search
4. Finding the right class and subclass for the DIY patent search
5. Search databases for both the issued patents and published patent application for your DIY patent search
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Lawyer, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.