4.3.1 Construction and the Inventive Concept

Also in this Chapter:

• 4.3.2 Earlier Search Results
• 4.3.3 Additional Searching
• 4.3.4 Top-Up Searching
• 4.3.5 Preliminary Search
• 4.3.6 Applicant and/or Inventor Name Searching

Related Chapters:

• 4.4.2.1 Independent Claims
• 4.4.2.2 Dependent Claims
• 4.4.2.4 Reserving the Search
• 5.5.1 Purpose of construction;
• 5.5.2.4 The invention described
• 5.5.4.7 'For use in', 'when used', and similar wording in claims
• 5.6.3.2 Claims directed to a single invention (Unity)
• 6.1.4 Unity of Invention
• 6.1.7 Claim Interpretation, Broad Claims, PCT Articles 5 and 6​​​​​​​;
• 6.1.7.2 Broad Claims​​​​​​​
• 6.1.11.3 Searching Product by Process Claims.

Before commencing a search, you need to know what it is you are trying to find. Claim construction is key and its importance must not be overlooked.

For specific guidance on claim construction, see:

• 5.5.1 Purpose of construction;
• 6.1.7 Claim Interpretation, Broad Claims, PCT Articles 5 and 6​​​​​​​; and
• 6.1.11.3 Searching Product by Process Claims.

Quite often the scope of the independent claim will be broader than the inventive concept, which itself will usually be broader than the embodiments. If you misconstrue the claims, don’t identify the inventive concept and/or the problem to be solved, or restrict yourself to the embodiments, you may not find relevant art.

Answers to the following questions will aid in claim construction and the development of a robust search strategy:

• What is the inventive concept? What problem does the invention address and how does it solve the problem? Can this be readily identified from the specification? Is this reflected in the claims? (see 5.5.2.4 The invention described);
• Can the claims be searched over their full scope? Are the claims unduly broad? Are there any terms such as “for use” that give the claims a particularly broader scope than expected? (see 6.1.7.2 Broad Claims, and 5.5.4.7 'For use in', 'when used', and similar wording in claims);
• Are the claims unified? Should the search be restricted to a particular invention? (see 6.1.4 Unity of Invention, 5.6.3.2 Claims directed to a single invention (Unity), and 4.4.2.4 Reserving the Search);
• What technical features in the independent and dependent claims need to be considered (see 4.4.2.1 Independent Claims, and 4.4.2.2 Dependent Claims).