"This is patently absurd; but
whoever wishes to become a philosopher must learn not to be frightened by
absurdities." Bertrand Russell, British author, mathematician, &
philosopher (1872 - 1970)
Experienced patent searchers understand the nuances of prior art searches.
However, if you are new to the concept, here is an article that can get you up
to speed.
TIP:
Google® how to
search prior art for
more useful information on this topic.
///////
Prior Art Search:
Everything you need to know
If you’re looking to understand everything about
prior art search, you’ve landed on the right page. By the time you’ll finish
reading this guide, you’ll likely have built a solid understanding of what can
be included in the prior art, how you can use this knowledge to conduct a patent search all by
yourself and avoid spending valuable resources on the non-patentable
subject matter.
For your reference, below listed are the questions we’d be discussing in this
guide. If you’d like to jump to a particular question, feel free to click on
the hyperlink in the table of contents to get to the corresponding section.
However, for a newbie, it is advisable to go through the complete guide, in the
same sequential way it has been written.
Table of Contents
What Is Prior Art?
How Prior art impacts your patents?
What Is A Prior Art Search?
What Are The
Different Types Of Prior Art Search?
Novelty Search (Before Filing A
Patent)
Validity/Invalidity
Search (After Issuance Of A Patent)
Clearance
Search Or Freedom-To-Operate Search (Before Launching A Product)
Why Do You Need A Prior Art Search?
How Much Does A Prior Art Search
Cost?
Professional Search Fees
Government Search Fees
When Can an Evidence
be considered as Prior Art?
How To Do Prior Art Search
Yourself?
Why
You Should Consider Getting The Search Conducted By A Research Firm/Attorney?
What
Is Prior Art?
Prior
Art, in simple terms, is evidence that your invention is already well-known and
not something unique. In other words, prior-art is a reference of some
type in some form (textual, visual, audio, etc.) which serves as clear proof
that the invention you hold is not something unique.
It is not important that the prior art is present physically or is commercially
available. It is enough that someone, somewhere, and at some time previously
described, showed or made something that contains the use of a technology that
is very similar to your invention.
Now prior art could be found in many forms – Be it a patent or some form of the
printed publication including, but not limited to, research papers, trade
journals, a college thesis, an advertisement, books, videos – basically
anything that is available in the public domain and is public knowledge.
There’s just one catch – A prior art could only invalidate a patent if
it has been available to the public before the effective filing date of
the patent. For example, a textbook that gives the idea of an invention can
be considered as prior art but a textbook that has a revised version of the
idea of an invention after the effective filing date of a patent application
cannot be considered as prior art.
It is not vital in which language the prior art is described or how many
publications of the same are available. The main interest is that the
information can be accessed by the public. Thus, a small newsletter by a local
company will have the same validity as that of a leading newspaper in a
country, provided it is properly time-stamped.
However, figuring prior art for your invention is not as complex as you think
it might be. While you could always contact a lawyer or patent attorney to
conduct a prior art search on your behalf – saving your efforts and resources
in filing fees – it is also possible to conduct a prior art search all by
yourself.
How?
Well, it is not exactly that simple, but if you could differentiate your
invention from a similar one, it isn’t a very hard nut to crack either. We will
walk you through the steps to perform a prior art search by yourself in later
sections, but first, let’s have a look at the different kinds of prior art
searches, when they are required, and the associated costs.
How
Prior art impacts your patents?
Before
we proceed further and answer these questions, first let’s go through a bit of
prologue aka a brief overview of how prior art impacts your
patent.
Getting a patent for your invention requires a filing process. When you submit
your patent application to the PTO, the examiner conducts a prior art search to
figure if there exists any art before the filing date of the patent application
that could deem your idea invalid.
If such art exists, your patent application gets rejected and you might have to
make some amendments in the claims of your invention, such that it does not
have any overlapping prior art. And if your patent application surpasses this
phase, you will get a grant for your patent.
The same applies when the validity of your granted patent is challenged, or in
PTO via any of these mediums – IPR, PGR or CBM. In any of these scenarios, if
prior art is found, it could reduce the scope of your patent or deem your
granted patent, invalid.
Now that we know how prior art could impact the grant process of your
application and validity of your granted patent, let’s have a deeper look at it.
What
Is A Prior Art Search?
A
Prior art search is a dedicated search to figure if there exists any evidence
that could deem a patent/application invalid. A prior art search can be of
three types, based on the purpose of the search, i.e. Novelty Search, Invalidity
Search, and FTO Search.
What
Are The Different Types Of Prior Art Search?
Novelty
Search (Before Filing A Patent)
A novelty search or
patentability search is conducted before filing a patent application
in the PTO to determine if the invention is novel before the inventor commits
the resources necessary to obtain a patent.
Conducting this search before filing a patent application can help ensure that
the application won’t be rejected. And if, during the search, something does
qualify as prior art, you can save your money by not opting the already
existing idea to get patented, or, you can make enhancement in the features of
your invention to render it as a unique idea.
This search may include searching in databases of patents, patent applications,
and other documents such as utility models and in the scientific
literature. Novelty searches can also be used to help an inventor determine
what is unique about his/her invention. If any prior-art is not found that
overlaps your idea, it can be potentially patentable.
Thomas Edison, for example, did not get a patent on the basic concept of the
light bulb. It was already patented and therefore was in the prior art.
Instead, Edison got a patent for his improvements to the light bulb. These
improvements included a very thin filament and a reliable technique for joining
the white-hot filament to the room temperature lead wires.
A novelty search is also conducted by patent examiners during the prosecution
of a patent. However, if you feel your idea/invention is vital and should be
granted a patent, it always makes sense to get a novelty search
conducted by an expert beforehand to ensure that your invention meets the
criteria of patentability. Further, this approach makes sense since you can
save a lot of resources – both in terms of time and money, spent on drafting,
filing, and prosecution fees.
Validity/Invalidity
Search (After Issuance Of A Patent)
Patent
validity or invalidity search is a comprehensive prior art search –
conducted after the issuance of a patent – either to authenticate the
enforceability of a patent’s claims or to cancel one or more claims of a
patent, correspondingly. These two searches are alike except for the needed
outcome of the search (valid or invalid patent claims).
Related Read: Everything we could
tell you about Patent Invalidity search.
Clearance
Search Or Freedom-To-Operate Search (Before Launching A Product)
It
is quite important to assess and understand the business risks involved when
you are bringing a new product to the market. This is particularly vital as
there are chances that your product may infringe on another’s patent rights.
Freedom to practice opinion is a legal judgment that analyses your product
against an appropriate selection of patents to find out the level of risk
associated with bringing the product to market. This search can help you
avert from the dangers of potential infringement while launching your product.
Related Read: Ignoring Freedom to
Operate searches could be fatal for your organization. Find out how?
Now that we had a look at the different types of
patent searches and their purpose, it is important to figure why you need a
prior art search. If you have reasons to believe that you do not need a prior
art search, the pointers below could change your mind. If you’re on the same
side of the wagon, feel free to skip this section and jump to the next.
Why
Do You Need A Prior Art Search?
The
process of getting a patent can be costly as you have to pay hefty fees
(constituting a filing fee, an examination fee, and attorney fees). While
official fees are often discounted for individual inventors and small
enterprises in most jurisdictions, the overall cost of protecting the invention
can be quite high, mainly if the inventor wishes to safeguard his or her
invention in several jurisdictions.
Wondering how much drafting, filing and maintaining a patent would cost you in
various jurisdictions across the world? We have answered this question in
another post which could be read by clicking here – Cost of Filing, Obtaining and
Maintaining a patent in Major Jurisdictions across the world
So it is generally recommended to carry out a prior art search yourself or hire
a professional to do so before the
commencement of the patenting process. Based on the findings of the prior art
search, the novel (unique) and inventive features of the invention can be figured,
and a decision can be made, whether to file for a patent or not and in which
jurisdictions, it should be filed.
The benefits of conducting a prior art search can be summarized in two points:
It can save resources in filings and prosecution proceedings if the invention
is not exclusive, allowing R&D centers to use their IP budgets sensibly.
The prior art search helps to find out the closest prior arts and thus can
describe the scope of protection present in patent claims. Even prosecution
time can be reduced due to the need for fewer office actions and claim
amendments.
A prior art search is like a due conscientiousness exercise that can alter the
risk of rejection of the patent application.
Now that we had a look at some of the reasons why you should get a prior art
search conducted before filing a patent, the next question that might occur to
some of you is how much it would cost if you see professional assistance.
Well, you’re about to get answers.
How
Much Does A Prior Art Search Cost?
Professional
Search Fees
For
patent searches, the fee differs as there are different methods used by
professionals that may vary their charge fees. Some opt for a flat rate, while
others charge an hourly fee. The hourly fee is mostly applicable in cases where
you want the researcher to sort through the information and give you an opinion
on the patentability of your invention. Ultimately, the fee being charged comes
down to the method being used by the person who would perform the search.
If your invention is fairly simple, the searcher might charge you around $100
for the search. This is in the case if you hire a service that doesn’t offer an
in-depth opinion or analysis. For more complex inventions you might end up
paying $2,000 or more as it requires a deep analysis of the domain under study.
Below listed are some ballpark estimates if
you choose to hire an attorney.
$1,000 to $1,250 for simple inventions
$1,250 to $1,500 for slightly complex inventions
$1,500 to $2,000 for moderately or relatively complex inventions
$2,000 to $3,000 for highly complex inventions or software
Some businesses – that file a lot of patents – need to opt for patent search
quite a number of times. In those cases, it makes sense to subscribe to
advanced patent research tools and services instead of paying a separate fee
for each search.
Government
Search Fees
After
the submission of your application, the patent examiner assigned to your case
will perform a search related to your patent. In the US, the search fee for
a small entity is $300, while for larger businesses, the fee
is $600.
When
Can an Evidence be considered as Prior Art?
Prior
art is defined by Title 35, United States Code, Section 102, which
states: A person is not entitled to a patent if the invention was
“known or used by others in this country, or was patented or described in a
printed publication in this or a foreign country” before the date of invention
by the applicant for the patent.
After the introduction of the America Invents Act (AIA) and the shift from
first to invent to the first inventor to file, there are considerable changes
in patent law. While the virtual definition remains the same, there are quite a
few changes which are introduced after the passage of AIA, which is summarized
as follows:
If the invention in question was described in a patent issued anywhere
in the world more than 12 months prior to a US application being
filed, then no patent can be obtained.
If the invention in question was described in a printed publication
published anywhere in the world more than 12 months prior to a US
application being filed, then no patent can be obtained.
If the invention in question was publicly used in the US more
than 12 months prior to a US application being filed, then no patent can be
obtained.
If the device, machine or compound in question was offered for sale in
the US more than 12 months prior to a US application being filed, then
no patent can be obtained.
How
To Do Prior Art Search Yourself?
By
now, you must be having a solid understanding of what can be considered as
prior art, what does and does not qualify as evidence in court post-AIA, some
solid reasons why you should absolutely get a prior art search conducted and
how much it would cost you – based on the complexity of your invention – if you
choose to go with a professional to get the search conducted.
Now, a lot of people would like to conduct a prior art search by themselves to
save some money. Though less recommended, going the DIY way has its own set of
pros including getting a grasp of inventions out there which would help you
develop a better business plan, and could even help you refine your invention
to cover any additions/modifications in your invention. However, it’s not as
easy as it sounds.
Searching for prior art requires a search on different databases to find
whether someone else has already described an idea similar to yours. A search
strategy is required to be formulated for a prior art search at the beginning
using either a keyword search, name search, classification search or
a citation search, or a combination thereof.
In the keyword search, all of the main features of the invention are recognized
and then keywords and their related synonyms are determined from the key
features of the creation to formulate search strings to run on patent and
non-patent databases.
In addition, patent classes, applicants and inventors which are similar to
the field of the invention need to be recognized and used in the search strings
to further the search strategy. To choose the most relevant prior arts, all of
the search results must be manually analyzed.
Now there could be thousands of search results based on your search string and
it is difficult to read through each of them. What could one do in that case?
There’s an easy way to do it – You can screen the results at multiple levels.
In the first level of screening, only the title and abstract of the search
results can be read, and after shortlisting the relevant-sounding ones, the
second level of screening can be done to figure the most relevant to your
invention. Once most of the relevant prior arts have been shortlisted, their
citations can be verified to find out more results around the shortlisted ones.
For the sake of simplicity, let us condense all the above knowledge into few
pointers for your later perusal along with some database suggestions.
Brainstorm the keywords that describe your invention
To conduct a thorough search, you’ll need to take into account, all possible
keyword combinations that could exist in the prior art.
Conduct a thorough search of various databases
After having assembled a list of search strings based on
keywords/inventors/assignee/citation data, the next step is to input these
strings on some of the most common databases.
Below listed are few patent
databases where you could conduct a search:
Google Patents
USPTO search
interface
Espacenet (European Patent Office)
search interface
WIPO search
interface
Patent Lens
Got the overview? Now, the important part is using these databases effectively.
We won’t go in detail on how to conduct searches on each of these databases, as
we have already covered the same in another post. If you are curious to figure
how to perform a patent search using all the above mediums and don’t want to
leave the page, you can download the below PDF covering the material for a
later perusal.
Go beyond Patent Databases
Prior art is not just confined to existing patents or patent applications. All
ideas that are publicly available and are publicly disclosed, can be counted as
prior art. Thus, a comprehensive prior art search should extend beyond patent
searching. You should also include the following sources in the domain of your
invention for a complete search:
Google Scholar search for scholarly publications
Non-patent literature like articles, publications, or journals (printed or
electronic)
Amazon or other e-commerce sites for product search
When you file your patent application, you want to state the relevant prior art
along. If the patent examiner has all the relevant references at his disposal,
you will end up with a stronger patent. Additionally, this will satisfy your
ethical duties of disclosure, candor and good faith to report prior art to the PTO.
So make sure you save a list of all relevant results.
Know when to stop searching
Your goal is not to look at all the
prior art out there. Rather, it’s to examine enough prior art to gain a
complete understanding of where your invention stands in the industry. Once you
think you have performed a satisfactory search, you could call it an off and go
for the filing process.
Related Read: 5
Ways to do an Advanced Prior Art Search
Why
You Should Consider Getting The Search Conducted By A Research Firm/Attorney?
Going
the DIY way sounds amazing, but it has its own set of cons. It can never be
said with confidence that no prior art went unsearched as the search needs
skills, training, and practice. Any prior art if missed could lead to
the rejection of the patent application or termination of the granted
patent at a later stage.
Hence, it becomes paramount that the task is assigned to professionals who know
their way in the business – aka conducting a comprehensive search. It is also
extremely important to choose the right firm to do the job, whose mission is to
help you with your end goal and not just take up a search as a vending machine approach.
In other words, you should be looking for a service partner and not a vendor to
carry out your search to get the best results.
To find the best vendor for the job, research around a bit, read some of the
reviews/testimonials posted by others who have perused a particular attorney’s
service – In short, do your homework before settling with an attorney for the
search. The chances of getting a patent grant for your application and
retaining the validity of your granted patent depends a lot upon the attorney
you choose to conduct the search on your behalf, so choose wisely.
Here are some of our helpful guides that can help you out here:
How To Select A
Better Search Partner?
What You Should Look For
When Deciding A Patent Search Partner?
Conclusion
In this not so short guide, we explored various questions someone would have
related to the prior art. Though limited, the questions covered the
fundamentals of the prior art and prior art search in particular. We scratched
the surface of some topics – one of them is how to conduct a free prior art
search by yourself – given the limited scope of the article.
However, if you’d like to take a deep dive and want to understand how to
perform a patent search by yourself using various databases, this guide on free patent searching
would be of great help. If the former isn’t a subject of your interest, and you
are looking to understand the sources that welcome could serve as prior
art and various unconventional strategies and tactics to spot prior art (for
novelty or invalidation search), you’d want to bookmark this page.
To efficient searches!
source:
https://www.greyb.com/prior-art-search/
///////
Starting Down the Startup Path: TOC – Table of Contents
If you enjoyed this post, you might like some of
the others in this series. Here is a convenient way to find them.
///////
Starting Down the Startup Path (Part 1 of a series)
How do you find emerging technology? One way is to focus on startups.
OK, fine, but how do you discover the startups that offer a technology of
interest to you? One way is to focus on venture capital
firms that focus on the areas of interest to you.
Read full post at:
https://desulf.blogspot.com/2019/12/starting-down-startup-path-part-1-of.html
Starting Down the Startup Path (Part 2 of a series)
Anyone involved in venture capital or its variants is interested in
identifying potential candidates for investment opportunity. Finding these
candidates is not easy. But a place to start on startups is to see what
companies other venture capital firms have identified.
Read full post at:
https://desulf.blogspot.com/2019/12/starting-down-startup-path-part-2-of.html
Starting Down the Startup Path (Part 3 of a series)
Panning for Google® gold: startups with promising new technologies
The previous post in this series featured the List of Top Oil and Gas Private
Equity Firms discovered as the result of a Google® search. The list focuses on
companies pursuing acquisition and development of existing resources. While the
list will be useful to many, this series of posts focuses on techniques you can
use to identify startups with promising new technologies.
So, on to the next step in the quest to find new technology on the cusp of
successful deployment.
Read full post at:
https://desulf.blogspot.com/2020/01/starting-down-startup-path-part-3-of.html
Starting Down the Startup Path (Part 4 of a series)
Nothing Ventured, Nothing Gained: Follow the Lead of the Oil Majors
How do you identify startups that fit your corporate goals? One way is to set
up and advertise a venture capital unit, which enables young companies to pitch
their technology to your corporation.
And that is just what several oil majors have done.
Studying their portfolios can provide a wealth of helpful information, whether
you are a venture capitalist, a startup, or simply interested in identifying
emerging technology.
Read full post at:
https://desulf.blogspot.com/2020/01/starting-down-startup-path-part-4-of.html
Starting Down the Startup Path (Part 5 of a series):
Searching Patents
Patents: Emerging Tech
Patents are a rich source of cutting-edge research. And much of the research
reported in patents never appears in peer reviewed journals. So, to identify
emerging technology in your field, consider searching the patent literature on
a regular basis.
TIP: Read Tips
for reading patents: a concise introduction for scientists for an
excellent overview on this topic.
Read full post at:
https://desulf.blogspot.com/2020/02/start-up-startdown-path-parti-5-of.html
Starting Down the Startup Path (Part 6 of a series):
Reviewing Patents
Searching for patents is iterative. You type in some keywords. Results reveal
more keywords. You type in those keywords. And repeat.
This can be really tedious, irksome even. Sometimes it is hard to figure out
whether a given patent is even relevant to your needs.
Fortunately, a number of experts have offered tips to make it easier to read a
patent quickly.
TIP: Google® how to read a
patent for more tips on efficient ways to review a patent
Read full post at:
https://desulf.blogspot.com/2020/03/starting-down-startup-path-part-6-of.html
Starting Down the Startup Path (Part 7 of a series):
Patents and Run On Sentences
Per USPO rules, the Claims in a patent must be stated in a single
sentence. In many cases, the “single sentence” can be, thanks to colons,
commas, semicolons, et al., several hundred words long.
But remember that, as difficult as it may be to wrap your head around any given
claim, it still is faster than reading the whole patent.
Read full post at:
https://desulf.blogspot.com/2020/03/starting-down-startup-path-part-7-of.html
Starting Down the Startup Path (Part 8 of a series):
Mining Patents for Keywords
Mining patents for useful information can be tedious. One thing you can
do is to look for keywords to use in Google® searches. For example, in a
previous post I listed a Breakthrough Technologies LLC patent with the
following claim …
Read full post at:
https://desulf.blogspot.com/2020/03/starting-down-startup-path-part-8-of.html
Starting Down the Startup Path (Part 9 of a series):
PTQ Catalysis 2020
PTQ Catalysis 2020 is ready to view at www.eptq.com. As always, it is
rich in useful information. In the context of our Startdown the Startup Path series
of posts, one article in particular caught my eye …
Pilot plant studies of hydrotreating catalysts
Read full post at:
https://desulf.blogspot.com/2020/03/starting-down-startup-path-part-9-of.html
Starting Down the Startup Path (Part 10 of a series): The
Bigness of Machine Learning
Big data is a big deal. We humans generate so much data that our puny
brains are unable to process it. So we have created machines to do that for us.
There is a whole discipline called machine learning designed to train these
machines to process massive amounts of data in useful ways.
“Machine learning,” as Serdar Yegulalp notes in an InfoWorld article, “is a
complex discipline. But implementing machine learning models is far less
daunting and difficult than it used to be, thanks to machine learning
frameworks—such as Google’s TensorFlow—that ease the process of
acquiring data, training models, serving predictions, and refining future
results.”
Read full post at:
https://desulf.blogspot.com/2020/03/starting-down-startup-path-part-10-of.html
Starting Down the Startup Path (Part 11 of a series):
Thread the Needle
In a horse race, the goal is to bet on the winning horse. Common sense tells us
that if we knew for a certainty which horse would win the race, racing them
would be pointless. The same logic applies to new technologies, and the
companies that create them.
That’s why it can be useful to look at companies that have been examined by
investment funds like the Columbia Seligman
Communications and Information Fund.
Read full post at:
https://desulf.blogspot.com/2020/04/starting-down-startup-path-part-11-of.html
Starting Down the Startup Path (Part 12 of a series):
Patent Prior Art Search
Prior Art Search: Everything you need to know
If you’re looking to understand everything about prior art search,
you’ve landed on the right page. By the time you finish reading this guide,
you’ll likely have built a solid understanding of what can be included in the
prior art, how you can use this knowledge to conduct a patent search all by
yourself and avoid spending valuable resources on the non-patentable subject
matter.
Read full post at:
https://desulf.blogspot.com/2020/04/starting-down-startup-path-part-12-of.html
Starting Down the Startup Path (Part 13 of a series)
Dibenzothiophene Patents 2020
What’s the quickest way to determine if a patent is of interest to you?
Depends on your purpose. This tip sheet may help you decide which section of a
patent to focus on.
Read full post at:
https://desulf.blogspot.com/2020/05/starting-down-startup-path-part-13-of.html
Starting Down the Startup Path (Part 14 of a
series)-Google Patents Find Prior Art Link
Patent research is important in any area of research you are engaged in
... especially if you are a startup, or are considering investing in a startup.
Prior art is an important concept in patent research.
In this regard, Google® Patents Prior Art Link is useful. When you
find a patent of interest, in the upper right of the screen you will find a
link labeled Prior Art.
Read full post at:
http://desulf.blogspot.com/2020/05/starting-down-startup-path-part-14-of.html
///////
Google® Better!
Jean
Steinhardt served as Librarian, Aramco Services, Engineering Division, for 13
years. He now heads Jean Steinhardt Consulting LLC, producing the same high
quality research that he performed for Aramco.
Follow Jean’s blog at: http://desulf.blogspot.com/
for continuing tips on effective online research
Email Jean at research@jeansteinhardtconsulting.com with questions on
research, training, or anything else
Visit Jean’s Web site at http://www.jeansteinhardtconsulting.com/
to see examples of the services we can provide
No comments:
Post a Comment