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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How to file a patent in a few easy steps

Inventions have the power to change the world. 

A simple example would be the patent named “Navigation system using satellites and passive ranging techniques,” or the GPS. 

Can you imagine traveling these days without the help of a GPS system on your smart phones? 

When an invention is protected and the inventor stands to gain from it, that acts as an inspiration for every inventor out there to do more. That’s why protecting your invention is important. 

Getting your invention patented is the best way to protect your invention from others. If you have heard about how difficult it is to file a patent, then you probably are right. There are a lot of things that need to fall in place for you to get your invention patented. Thankfully, the entire process can be broken down, and thus becomes less complex than it actually is. 

 

Let us look at how you can file a patent in a few easy steps:

 

#1 Have a deep understanding of your invention:

The first step towards getting your patent is to ensure that you know your product inside out. What part of the invention makes it unique and useful? Once you are clearly aware of what makes your invention worthy of getting a patent, the next step is to consider the scope. You need to find out if there are other ways to invent your product. Write down all the other ways of making your invention work, even if they are not the most ideal way to do it. 

You need to find if your invention has a broader application. If that’s the case, then you need to do more modifications to narrow it down. Doing all of this will ensure that you will be able to protect and will also benefit from being aware of the full scope of the invention. Your patent application will be tighter and more likely to be approved by the patent office.

 

#2 Keep a record of how you came up with the idea:

Make sure to keep a record of how you arrived at the idea and the step-by-step process that you took to come to this stage. A written record like this can actually help your case if you face any issues and it even helps bolster the creative process. Write down everything, from the changes you made, corrections, mistakes, and even the slightest line of action. 

Keep records of who has been given access to your idea. Ensure that all of these people have signed a Non-Disclosure Agreement (NDA) which specifically states that the rights to your idea and their work on your idea are all yours. Hire a patent firm and make sure that you get the NDA drafted by their lawyer so that there are no loopholes which might eventually come to bite you. 

 

#3 Does your invention qualify for patent protection?

Ideas cannot be patented. Everyone knows that. So if you want to protect your invention, you need to show the patent office how exactly it works. For an invention to be patentable, it must be new, non-obvious, and useful. 

New means that the invention cannot be known, used, described or patented before the filing date of your patent application. 

Non-obvious means that the invention should be significantly different from similar inventions which are already known. 

Useful means that the invention is useful, as in, a chemical, mechanical or electronic invention. 

 

#4 Patent Search:

Doing a patent search will help you figure out if your invention is new. Searching for prior patents and going through previously published patent  applications will assist you in understanding if the patent is patentable. While a patent search isn’t really a must, it will help you determine the proper scope for the patent application. 

If you plan to do patent search by yourself, we will advise you against it as it requires technical expertise and complex tools that only an IP firm will have. Do remember that the patent office will conduct its own search after you file your patent application. 

 

#5 How do you want to protect your invention? 

File a provisional patent application at first. This offers you protection in case someone says that they had the idea before you did. You can even take a year after this to file your patent application. During this period, you can add claims to strengthen the prototype that you have built, but you cannot add anything new. 

Let’s say you have added a piece of technology or something that adds more firepower to your invention, then you need to file a new patent application to add them. 

There are three main types of patents: Utility, Design and Plant patents. You have to figure out the right patent type for your idea. 

Utility patent- It is an exclusive right that is granted to an invention which doesn’t allow anyone else to profit from the invention without the inventor’s permission. 

Design patent- This type of patent is usually granted if the product has a unique configuration, unique surface ornamentation, or both. 

Plant patent- This patent protects a new and unique plant’s key attributes from being copied, sold or used by others. 

 

#6 Write your patent application:

You need to prepare a specification that also includes an abstract, summary, background, detailed description, conclusion, the scope and so on. Patent applications are a complex affair if you are doing it by yourself. They have several parts, and each of these can be rejected for many reasons. Ensure that you double and triple check what you have added in your patent application before sending it. A mistake might end up costing you a lot of money, more importantly, a lot of time too. Drafting the right patent application requires a lot of practice and technical know-how. It is strongly recommended to hire an IP firm to take care of your patent application. 

 

#7 Wait for the patent examiner’s response:

For your patent application to be processed, it takes at least one to three years. Make sure you get your application right the first time itself as you do not want to find that your application has been rejected owing to mistakes that could have been avoided. One patent examiner will be assigned to your invention and if you ever receive any communication from them, ensure that you respond to it immediately. 

If you have an attorney, the patent office will reach out directly to them. You can also get things expedited by arranging an interview with the patent examiner. It will help clarify the concerns they have about your invention, if any. 

During this period of time when you are waiting for a response from the patent office, make sure you are working on the business side of things. Since your patent is pending and the invention is protected, you can still talk business to interested parties. 

 

#8 “Notice of Allowance”:

The patent office will issue a “Notice of Allowance” if you are going to receive the patent. After you pay the required Issue Fee, you will receive your patent approximately after one to three months.  Once your patent is granted, your invention or design will be protected anywhere from 14 to 20 years, depending on the patent that has been granted. 

After you receive the patent, make sure you keep the patent alive by paying the maintenance fees. 

 

Conclusion:

Above are the steps using which you can file the patent easily. Unless you are 100% sure that you can handle the patent application process because you have dealt with it earlier, do not do it by yourself. If you still plan to do it by yourself, make sure you scrutinize each and every point that you add with excruciating detail and thoroughness. There cannot be any lapse because that would mean that the patent office will get back with a rejection. It can be a terrible cycle if you do not get the application right in the beginning itself. 

Get in touch with Researchwire’s patent experts who will help you with filing your patent application if you have an invention that you think deserves formal protection. 

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HOW TO SPEED UP THE PATENT PROCESS

32 months.

That’s the average time taken to obtain a patent from a patent office. 

In this cut-throat world of business, that’s a lot of time. There are a number of factors that affect this time duration. From patentability searching to application drafting, filing, and so on, all of these take up time. The patent process can be an excruciating wait if getting your patent ready will mean immediate business results for you. 

Patent offices are looking over thousands of patent applications. Ensuring that each one of them meets all the formal requirements takes a lot of time.  There are certain fields where getting a patent in an accelerated manner becomes pivotal to protect their R&D efforts. 

A reason why patent applications are not quickly approved is because the examiners want to ensure that they get it right. Any lapse from their part can result in a lot of damages to the business that has filed the patent application. 

 

Why should you speed up the patent process?

When you speed up the patent process, it can immensely benefit your business. Here are some of them:

  • Competitive advantage: Having a patent issued in your name offers you a great amount of protection when compared with just saying that your patent is pending.
  • Licensing: It can be an additional revenue and a patent awarded to your name will give you immense leverage during discussions on royalty and licensing.
  • Enforcement: There is no way to enforce your patent rights against infringers unless you have the patent issued in your name.
  • Raising money: When you have a solid patent portfolio to show to your prospective investors, they will be able to trust in your business more. It will help with raising funds for your venture. 

 

Here are a few steps that you can take to speed up the patent process:

#1 Write a clear patent application:

The best way to reduce the chances of any delay in your patent approval process is to be excruciatingly thorough when you draft the application. Do remember that many applications are being handled apart from yours and you need to reduce as much friction as possible for them. 

Before you send the patent application, make sure that you do prior art search. The objective of prior art search is to ensure that your invention is new and non-obvious. By doing prior art search, you will be able to identify the closest prior arts, thus helping you define the scope of protection in your claims. It can even reduce your prosecution time as it will require lesser office actions and claim amendments.

When you write the patent application, describe the invention, how it works and what makes it a new invention and so on, in detail. If there is something that makes the invention unique, write about it in detail as well. It is important that you have a clear understanding of what makes your product ‘patent’ worthy. 

If you end up receiving a notice asking for more clarification, then ensure that you respond to them immediately without a delay. 

 

#2 Petition to Make Special:

It is possible to request that your application be given special privileges so that it can be expedited. You need to qualify to make your petition special. Here are the categories, the applicant should qualify for at least one of these:

Age: If any of the inventors is 65 or older, you can ask your attorney to get this petition filed.

Illness: If one of the inventor’s health is “such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course,” then you can request for the patent approval process to be expedited. 

Invention type: If you want to make the petition special regardless of the age or illness of the inventor, here is the criteria. The patent application that you file should be for an invention that does the following:

  1. Helps fight terrorism
  2. Increases the quality of the environment.
  3. Helps in the conservation of energy resources

 

#3 Be well prepared:

Once your patent application has been submitted, it may take years before you even get a sly nod from the patent office. You need to keep this in mind when you are about to file the patent application so that you have a strategy in mind to tackle any unforeseen delay. Make sure you are aware of all the examples, technical terms, and how you intend to negotiate your rights with the patent office. 

There are six months for you to respond to the patent office before you are supposed to start paying fees. Have your team ready to respond to the questions as soon as there is one. Every single day’s delay will also rack up your fees. It is a lose-lose situation if you are not well prepared. 

 

#4 Communicate with the patent officer:

When it comes to patent applications, it makes sense to communicate directly with the patent officer. Instead of sending emails back and forth, a face-to-face conversation will clear up things faster than you could imagine. Or even a video call would suffice. Instant communications will also help you avoid any misunderstandings. 

Even your examiner wants to get done with your patent application because it is his/her job. It is in the interests of both the parties to pick up the phone and have a conversation. When you talk to the patent examiner, hear their side to understand their view of the invention. More often than not, patents are technical, but the examiners need not necessarily be able to understand some of it. Having a one-to-one conversation can help clear the issues that they are facing and it will be easy for you to explain the invention without any jargon. 

 

#5 Original claims should be reasonable and few:

When you file broad patent claims, it is good for your business, but patent examiners prefer if you have claims that are narrow. There are high chances that a broad patent claim will cover more than what was invented, and that is a turn off for patent examiners. Keep in mind that you should make your invention sound novel and the non-obvious features of your technology should be clearly spelt out. This will help immensely with the fast tracking of your application. 

There are time constraints under which patent examiners work since there are a lot of patents that they need to pore through. When your claims are narrow, they are more likely to be cleared by the patent office. 

Here’s a tip- File narrow claims first so that you can cover the core elements. It will help in getting the patent fast tracked. After this, you can file for continuations so that you can cover every future application of your technology. 

 

#6 Use special programs to fast-track your application:

There are other ways to speed up patent prosecution as well:

  1. Prioritised Patent Examination Program
  2. Patent Prosecution Highway (PPH)

The Prioritised Patent Examination Program gives a utility or a plant patent application priority which allows a final deposition within twelve months. It offers special status and has fewer requirements, and it also doesn’t ask for a pre-examination search. 

PPH fast tracks the examination of the patent applications in participating countries with claims that have already been allowed by a foreign patent office in a corresponding patent application. When you receive the final ruling from the first patent office where you have filed your patent application, you can ask for a fast-track examination of your claims in the corresponding patent application pending in the other office. 

 

#7 Hire an IP firm: 

More often than not, it is best to get the help of experts instead of trying to do it yourself. Get the much-desired clarity by talking to an experienced Intellectual Property firm who will be able to evaluate your unique predicament and you offer the right solution. There is no one-size-fits-all solution when it comes to speeding up the patent process which makes it difficult for those who are not privy to the workings of patent offices to do the right thing by themselves. 

 

Conclusion:

You have to remember that the patent office and examiners are there to help you. If you follow the seven strategies that we have listed above, you will be able to speed up your patent application. Filing a patent application and getting it approved in a time that you want requires a lot of things to fall in place. Concentrate on things that are in your control and do it in the right way. 

ResearchWire is a leading intellectual property consulting company that takes care of all of its client’s IP needs. Our IP experts have immense domain and industry experience, that’s how we have been able to add value to each of our clients. If you are looking to speed up your patent process, we will be more than happy to help you with it and guide you in the right direction. Get in Touch

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