Prior Art Search and Its Significance

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What is Prior  art  search:

The term Prior  art  search comprises of two words, one is “Prior” and another one is “ Art “. Prior refers to “earlier existing knowledge” and the word  art  refers to the  art  of collection, documentation and presentation. So In layman term we can say “The  art  of searching, collecting, documenting and presenting information available before a particular point in time is prior  art  search.

Although, Prior  art  has nothing to do with Painting and is very much scientific, nevertheless it is a process which requires both “scientific” and “artistic” approach. Scientific approach is required to have a clear cut understanding of the technical aspects of the search subject and the artistic shade is required to collect, document and present the necessary information in a convincing and comprehensive manner.

Types of Prior  art  search:

Basically all types of patent searches are same in the sense that searchers try to find documents pertaining to an invention in question, however the ways and approach to search those are different from each other according to aims and objectives of the search. The aim of doing search from various angles and different point of view is either legal or technical. From technical point of view, such searches can help make the invention more effective, unique, useful, novel and non-obvious. While from legal point of view, it might ensure freedom-to-operate for products/services in questions, etc. There are many kinds of Patent searches some of which are as follows:

• Patentability search

• State-of the  art  search

• Continuing search

• Infringement search

• Validity search

Patentability search:

This is the most common type of search companies do in patent arena to determine whether an invention in question is within the scope of patentable subject matter. The patentability search is done prior to submitting a patent application to determine the usefulness, Novelty and non-obviousness of the invention in question in light of any previous patent/s or published article or literature.

State-of-the-art-search:

As the name suggests this kind of search is done to assess the present status of the industry in that particular domain which the Intended patent belongs. This search is done to determine if there is any area which has been overlooked by competitors or to determine how active the competitors are in this particular area means if a lot of patenting activities are going on in any particular area. If there is any scope to license or get license any particular technology. This type of search is done to solve a specific problem, determine what the competition is up-to and for other similar purposes.

Continuing search:

A continuing search is nothing more than a current awareness search of recently issued patents. Generally these searches are done to keep a keen eye on competitor’s activities and keep up with patent activity in that particular domain of interest.

Validity search:

Validity search are generally undertaken by companies or individuals to determine if it is possible to invalidate other’s patent. The searcher looks for issued patents or printed publications that can make other issued patents “obvious” the searcher could also look for earlier public knowledge pertaining to the invention, technical errors, fraud, or anything that may cause the patent to be declared invalid. As a whole we can say that a validity search is done to determine if an unexpired patent is valid or enforceable. Unlike rest of the searches Validity search is done after a patent has been issued to a particular inventor. Validity search is generally done by an entity infringing, or potentially infringing the patent, or it might be done by a patent owner or other entity that has a financial stake in a patent to confirm the validity of a patent.

Infringement search:

An infringement search is done to determine if proposed product/service might infringe on or be covered by unexpired patents. This type of search is concerned only with the claims of unexpired patents. Infringement search is the most effective tool to avoid any further case of infringement suit and is indispensable for a company trying to launch a product/service in the market.

Advantages of doing prior  art  searches:

Is my patent worth spending money on? This is one of the most important concerns that innovators face, or in other words we can say that Innovator should ensure the “novelty” and “non-obviousness” of their products before pumping a huge amount of money in filing their patents, and this is where the need of prior  art  search comes in. Your invention is valid and patentable only if it is different from the prior  art  and is not an obvious derivation of the same. The degree of deviation of your idea from the prior  art  is the key for a patent to be granted because it proves that your invention is not merely an obvious outcome of the previous existing inventions but you have put effort and intelligence in making the invention. Prior  art  documents are the means on the basis of which it is being proved that your invention has some involvement of human intelligence and is not merely a duplication of prior ideas. Means the novelty and non-obviousness of your patent is determined by doing prior  art  search.

Has my idea been already patented: Before investing a huge amount of money in the R&D of a particular invention or product, innovators should ensure that they are not just replicating somebody else’s idea and they should figure it out, right at the beginning that the idea has not already been patented otherwise your whole precious time and money will go in vein and you will end up just a looser. Since a prior  art  search involves searching different databases and literatures pertaining to the invention in question it can be determined easily whether your idea has been patented or not.

Is my patent infringing someone else’s idea: In an era where every company is suing another for infringing idea and technology it is obvious to bother about this aspect of patentability. Even before filing a patent they should study each and every patent granted in that particular domain meticulously and should ensure that no body (any company or individual) could file an infringement suit in future and this can easily be ensured by doing prior  art  searches. Because in prior  art  searches companies search all the databases to study all the patents granted in that particular domain and define the qualitative and quantitative deviation of the patent in question with respect to already existing patents. If the deviation is significant enough only then do they proceed for filing a patent otherwise they don’t. These were some most important advantages of doing prior  art  searches, however there are countless advantages of doing prior  art  searches some of which are as follows:

•Help you understand your competition

•Help you learn more about your field of invention

•Help you writing your patent application

•Researchers can easily understand the state-of-the-art technology and so minimize their time of research

•Inventors can modify their ideas to be suitable for the patentability criteria.

•Tentative applicants can determine whether they should apply for patent filing or should save the application fees.

•Prior  art  searches give examiners a chance to determine patentability of applications

•The strength of the patent can be assessed by doing prior  art  searches

Sources and tools for doing prior  art  search:

For US Patents/ Publications

Patent search can be done online. The US patent & trademark office (1790-present) provides some online databases which can be accessed without any fee.

Patent search should be done using keyword or phrases that describe your invention. Look for common terms describing the invention and its function, effect, end-product, structure and use.

The result will list the title and number of all patents related to your keywords. The title link will take you to the full text of the patent.

Patents which are granted before 1976 can be searched by putting patent number. Unless you know the exact patent number search will not be possible. With online patent be sure to examine other referred patents that the inventor has tested.

For an effective and comprehensive result the inventor could visit one of the 87 patent and trademark depository libraries besides this you can make an appointment with one of the patent librarians for further help.

In conducting a patent search at a PTDL, you will need to take the next steps which are as follows:

The Index to the US patent classification (Paper, CD-ROM) begins with this alphabetical subject index to the manual of classification. Search for your keywords. Note class and sub-class numbers.

Locate those numbers in the manual of classification. Note where the terms fall within the US patent classification system. Search the entire class schedule, paying attention to the dot indent. Revise search strategy as needed.

Read definitions to establish the scope of class (s) and sub-class(s) relevant to the search. They include important search notes and suggestions for further search.

Patent BIB (CD-ROM, WEST)-check if, you are on the right path, search patents BIB (1969) or WEST(1971) for a particular class/sub-class. Retrieve results and examine titles.

Once relevant class (es) and sub-class (es) are identified obtain a list of all patent numbers (1790-present) granted for every class and sub-class to be searched

Search the complete patent document (Microfilm), paper, and CD-ROM, WEST or USPTO web; search the complete text and drawings of closely related patents to determine how different they are from the invention.

Searching Patents/ Publications from Other Sources

There are numerous databases, both for public and private use, that index patent copies form multiple jurisdictions, including the US. Public databases are generally maintained by patent authorities all over the world. Private databases are maintained by private organizations. You can also subscribe to some useful paid databases which are maintained by some corporate companies on an annual basis. Sagacious Research encourages visiting these links while doing prior  art  search.

Free patent databases:

patentlens: Patentlens.net is a must visit for any inventors intend to do an effective prior  art  search. The site has more than 9 million patent documents from US, Europe, Australia and WIPO.

freepatentsonline: It is a free repository of more than 2 million patents. Normalized chemical formulae can be used as search term during a prior  art  search.

indianpatents.: This database offers search of all Indian patents documents.

Patent authorities’ databases:

Many patent offices around the world like European Union patent office allow free searching of their archives. Some of them are as follows:

wipo.int: This link takes you to the WIPO PCT databases

ep.espacenet.com:This is the official database of the European patent office

patentoffice.nic.in: This link will connect you to the searchable databases of the Indian patent office

Paid databases:

These are specialized databases exclusively meant for doing effective prior  art  searches, however these databases can only be accessed after subscribing with some annual fees. Some important paid databases are as follows:

Delphion Delphion is a tool, meant for users who want to have a quick look of all the patents pertaining to a particular domain and do not want detail analysis of the patents.

Derwentcollection (DWPI): This world patent index (DWPI) is a tool to be used with Delphion.

Thomson Innovation:

Others: There are many other paid databases available (including Thomson’s PatentWeb, Lexis Nexis’ TotalPatent, etc) and you can choose among them based on your exact requirements like Comprehensiveness/coverage desired, budget, etc.

Sum-up: As a conclusion we can say that Prior  art  search is an important and indispensable part in patent granting process and it should not be overlooked as it is the means on the basis of which you will be granted patent. Prior  art  is the document which is going to convince the researcher that your invention is useful, unique, novel, & non-obvious. It is the only document which will prove that your invention has some involvement of human intelligence and is not merely a duplication of pre-existing inventions.


Source by Rana Pratap Thakur

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