How to Identify Prior Art?

The objective of Prior Art is to find out if the invention presented is unique or not. Prior Art is evidence that your invention is already an idea that another inventor in some part of the world has considered and worked upon. It can be found out in many forms, from a video to a research paper, you could find evidence of your invention. The only caveat with prior art is that it could invalidate a patent only if it has been already available to the public before the effective filing date of the patent. 

 

Information that has been kept secret from the public, such as a trade secret, cannot be considered prior art. Prior art should be available to the public in some format or the other. In fact, there are many countries which require that such information be recorded in a fixed form. 

 

Importance of Prior Art searches:

 

  1. It helps you determine whether an invention is novel or not. 
  2. Doing a prior art search helps you develop a strong patent claim strategy before you file a patent application for your invention. 
  3. When done right, you can reduce your R&D costs significantly. 
  4. Helps you get updated with the latest technological trends.
  5. Puts you in a position where you can plan new products.
  6. You will be in a better position to explain your invention to a patent attorney after doing prior art search.
  7. Avoid submitting patent applications for inventions which have high chances of getting rejected. 
  8. Helps find the legal status of patent applications. 
  9. May help speed up your patent prosecution. 
  10. Find out newer markets for commercializing your invention 

 

When to invest in a Prior Art search?

 

Conducting prior art searches should be out of your purview if the exercise is not proportional to the value of the invention. If the patent application you are filing is only for branding purposes, and you do not have any intentions to prosecute, then you don’t have to invest in prior art search. 

 

On the other hand, if getting the patent approved means a lot to your company, economically and otherwise, then a prior art search is something that you should surely invest in. The decision to invest in a prior art search should entirely depend on your IP strategy and business goals. 

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Types of prior art searches:

Let us look at the different types of prior art searches, each of which have different objectives and are performed at different stages of the application process. 

 

Novelty search:

This type of prior art search is often conducted by patent attorneys, agents, or patent searchers before the inventor even files a patent application. Novelty search determines if the invention is novel even before the inventor gathers the resources necessary to obtain a patent. 

 

Validity search:

It is a type of prior art search which is done after a patent is issued. The objective of an invalidity search is to find prior art that the patent examiner might have missed out on. It is usually done by the party which has a financial stake in the patent so that they could determine the validity of the patent. 

 

Clearance search:

It searches the issued patents to see if the product or process of an invention violates someone else’s patent. Clearance search is usually limited to a particular country, a set of countries or a market. 

 

How to conduct an effective Prior Art search?

A prior art search involves poring through different databases to see if someone has already worked on an idea similar to yours. Here are the steps that you need to do for an effective prior art search. 

 

#1 Search for keywords used to describe your invention:

The first step towards doing an effective prior art search is to identify all combinations of keywords for describing your innovation. There are times when unique keywords might be used to describe an innovation. It might be difficult to find relevant patents at times as there could be jargons used in a specific industry or they might be translations from other languages to English. 

 

#2 Patent databases:

Even a standard search on Google is considered a good place to start from. Let us look at some of the other databases which will help you to see if there is prior art for your invention. 

 

  1. Search Google patents.
  2. Search the Espacenet EU patent and patent application database of the European patent office.
  3. Search the World Intellectual Property Organization database which is called PATENTSCOPE application database.
  4. Search the USPTO office database.
  5. Search the patent application database of the Canadian Intellectual Property Office
  6. Patent Lens– it has more than 225+ million scholarly works, 127+ million global patent records, and 370+ million patent sequences

 

#3 Go beyond patent databases:

Do remember that prior art is not only limited to existing patents or patent applications, but for everything that is publicly available in any format. That’s exactly why your search should not be just limited to patent databases. Here are the other places where you should continue your search:

 

  1. Google Scholar search for scholarly publications
  2. Non-patent literature like publications, journals, articles, etc.
  3. Search for products on sites like eBay, Amazon, Craigslist, etc.
  4. Product pages of competitors who are working in the same niche. 
  5. The Internet Archive Wayback Machine is also recognized as a valid source for finding prior art. 

 

#4 Save related documents:

When you are about to file your patent application, make sure you mention the most relevant prior art. There are chances that you might end up with a stronger patent application if the patent examiner has all the relevant references with them. Not only that, you are also ethically bound to report prior art if you find anything. Save the prior art related documents and keep one for yourself while handing them over along with your patent application.

#5 Stop searching:

The objective of prior art search is not to find out every single document that is available on this planet. But, it is to do a comprehensive search so that you don’t miss out on an invention that is already available. 

 

Even if a relevant prior art is there, it might not necessarily show up in most searches. For example, a patent document written in a foreign language might be impossible to access as you will not find the relevant keywords no matter what kind of combinations you use. Once you know that you have invested ample amount of time in it, you should call off the search. 

 

Things to keep in mind while doing prior art search:

 

  1. Many of the patent databases of different countries might not necessarily be published in English.
  2. When you want to find prior art for your invention, make sure you also look for prior art which is related to various aspects of the invention. 
  3. You will be infringing on a patent only when all the parts of the claim are present. 

 

Conclusion:

Thanks to the internet and the classification systems present in most IP offices across the world, doing prior art search by yourself is entirely possible. Performing prior art searches before filing your patent application is a crucial step towards protecting your patent. You will be able to find relevant patent and non-patent literature which can help you figure out if your invention is worth the hassle of patenting. 

Researchwire’s Prior Art Search services will help you find prior art, if there is any, and you can be assured of getting a comprehensive report at the end of the exercise. While you can do prior art search by yourself to an extent, it pays to put it in the hands of experts. It might also not be the best use of your time if you do not have previous experience in finding prior art, or the necessary skill set to do it effectively. 

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