A prior art search is a crucial step in the patenting process. It involves searching for existing documents, products, or technologies that are like or anticipate the claims of a patent application. Prior art can now be found in a variety of formats, including patents and printed publications such as research papers, trade magazines, college thesis, advertisements, novels, and videos anything that is in the public domain and public knowledge. It is important for inventors and researchers to thoroughly search for prior art to ensure their work is truly novel and not already patented or published. Failing to conduct a comprehensive search could result in wasted time, resources, and potential legal issues in the future.
There is only one catch:
Prior art can only invalidate a patent if it was made available to the public prior to the patent's effective filing date. For example, a textbook that contains the concept of an invention can be considered previous art, but a textbook that contains an updated version of the concept of an invention after the effective filing date of a patent application cannot be considered prior art.
It does not matter in what language the prior art is described or how many publications are available. The primary concern is that the public has access to information. Thus, a little newsletter from a local company has the same legitimacy as a big newspaper in a country, if it is properly time-stamped.
However, determining previous artwork for your idea is not as difficult as you might expect. While you may always hire a patent expert to conduct a prior art search for you, saving you time and money on filing costs, you can also conduct a prior art search on your own.
How to conduct a prior art search:
It is not so simple, but if you can distinguish your idea from a comparable one, it is not a difficult nut to crack. In the following sections, we will lead you through the steps of conducting your own prior art search.
- Understand the invention: Get a clear understanding of the invention or patent application's subject matter. Identify key features, elements, or aspects of the invention.
- Search Patent Databases: Use online patent databases such as the IPO, USPTO, EPO, WIPO, or Google Patents to search for relevant patents and patent applications. Conduct keyword searches using terms relevant to the invention.
- Use patent classification systems such as IPC or CPC to find patents in the same technical area as the invention. Classifications help organize patents by subject matter, making it easier to locate relevant prior art.
- Search for non-patent literature, such as academic papers, conference proceedings, technical journals, books, product manuals, and industry publications. For this, Google Scholar and other academic databases can be helpful.
- Use Prior Art Search Tools: Consider using specialized prior art search tools and databases or professional patent search services. These tools can help streamline the search process and improve the quality of results.
- Analyze and document findings: Review the identified patents and literature to determine their relevance to the invention's claims. Keep detailed records of the prior art you find, including citations, excerpts, and analyses of relevance.
- Consult Experts: If necessary, consult with experts in the relevant field to help identify prior art and assess its relevance.
- Review and refine: To ensure thorough coverage, review your search results and refine your search queries as needed.
Why Prior Art Search is Important for Patents:
- Avoiding Patent Infringement: Conducting a prior art search helps identify existing patents and technologies that may be like the invention. This helps patent applicants avoid infringing on existing patents.
- Assessing Patentability: Patent offices require that inventions be novel and non-obvious. A thorough prior art search helps assess whether an invention meets these criteria and whether it is likely to be granted a patent.
- Strengthening Patent Claims: Understanding the prior art landscape allows patent applicants to draft stronger claims that are more likely to withstand challenges during examination or litigation.
- Identifying relevant prior art early in the patenting process can save time and resources by avoiding the pursuit of patents that may not be novel or non-obvious.
What are the different types of prior art searches?
There are two main types of prior art searches: a novelty search, which focuses on determining if an invention is new, and a validity search, which assesses whether an invention is non-obvious. Conducting both types of searches can provide a comprehensive understanding of the prior art landscape and help strengthen patent claims.
Novelty search (prior to filing a patent): A novelty search or patentability search is performed prior to submitting a patent application with the Patent Office to assess whether the invention is innovative before the inventor commits the resources required to get a patent.
Conducting this search before filing a patent application might help ensure that it is not rejected. If whatever you discover during your search qualifies as prior art, you can save money by not patenting the already existing idea, or you can improve the aspects of your invention to make it unique.
This search may entail searching patent databases, patent applications, utility models, and scientific literature. Novelty searches can also help an inventor determine what distinguishes his or her invention. If there is no existing art that matches your invention, it may be patentable.
Thomas Edison, for example, did not receive a patent for the fundamental principle of the light bulb. It was already patented and, hence, considered prior art. Instead, Edison received a patent for his modifications to the light bulb. These advances included a very thin filament and a dependable method for connecting the white-hot filament to the room-temperature lead wires.
Patent examiners undertake a novelty search as part of the patent prosecution process. However, if you believe your idea or innovation is critical and should be granted a patent, it is always advisable to have a novelty search completed by an expert beforehand to ensure that your creation fits the patentability requirements. Furthermore, this technique makes sense because it allows you to save a significant amount of time and money on drafting, filing, and prosecution fees.
Validity/Invalidity Search (After Patent Issuance):
A patent validity or invalidity search is a comprehensive prior art search undertaken after the issuing of a patent to either authenticate the enforceability of a patent's claims or to cancel one or more patent claims, as appropriate. These two searches are identical except for the desired result (valid or invalid patent claims).
Clearance or Freedom-to-Operate Search (Before Launching a Product):
When releasing a new product, it is critical to examine and understand the associated commercial risks. This is especially important because your goods may infringe on someone else's patent rights. A freedom-to-practice opinion is a legal decision that evaluates your product against a suitable set of patents to determine the risk of bringing it to market. This search might assist you in preventing any infringements when launching your goods.
Many consumers now prefer to perform their own prior art searches to save money. Adopting the DIY route, though less encouraged, has its advantages, including gaining an understanding of existing ideas that will help you design a stronger business plan and may even help you enhance your creation to account for any additions or alterations. However, it isn't as simple as it sounds.
Exploring prior art entails exploring multiple databases to see if someone else has already articulated an idea comparable to yours. A search strategy for a prior art search must be developed at the outset, employing a keyword, name, classification, citation search, or a mix of the above.
In the keyword search, all of the invention's essential elements are identified, and keywords and associated synonyms are derived from the important features of the creation to create search strings for use in patent and non-patent databases.
Furthermore, patent classes, applicants, and inventors similar to those in the invention field must be identified and included in the search strings to enhance the search strategy. All search results must be manually sorted.
There could be thousands of search results depending on your search string, making it tough to sift through them all. What could one do in that situation?
There is an easy way to do it: screen the results at different levels. Only the search results' title and abstract are seen at the first level of screening. After narrowing down the relevant-sounding ones, a second step of screening can be performed to decide which are most relevant to your invention. Once the majority of the relevant earlier works have been shortlisted, their citations might be verified to obtain further outcomes around the shortlisted ones.
Know when to quit searching.
The purpose is not to review all prior art. Rather, it is to evaluate sufficient prior art to determine where your innovation fits in the business. Once you've completed a satisfactory search, you can call it off and begin the filing process.
Why should you consider hiring a research firm or attorney to conduct your search?
Going the DIY route sounds great, but it has its own set of disadvantages. It is impossible to say with certainty that no earlier art was searched, because searching requires skills, training, and practice. If any prior art is missing, the patent application may be rejected, or the granted patent terminated at a later stage.
As a result, it is critical that the assignment be entrusted to professionals who are well-versed in the industry, i.e., doing a thorough search. It is also critical to select the correct organization to do the work, one whose objective is to assist you in achieving your ultimate goal rather than treating the search as a vending machine. To achieve the greatest results, you should look for a service partner rather than a vendor when conducting your search.
To choose the best vendor for the task, conduct some research and read some of the reviews and testimonials left by others who have used a specific attorney's services. To summarize, do your homework before hiring an attorney for the hunt. The prospects of receiving a patent grant for your application and maintaining the validity of your awarded patent are heavily influenced by the attorney you choose to seek on your behalf, so make an informed decision.
Einfolge is a global patent and market research firm that specializes in conducting comprehensive prior art searches to help clients assess the novelty and inventiveness of their ideas. With a team of experienced researchers, Einfolge offers customized solutions to meet the specific needs of each client. Their prior art searches cover a wide range of sources, including patents, scientific literature, and industry databases. By leveraging their expertise and resources, Einfolge can provide valuable insights to support clients in making informed decisions about their intellectual property strategies.
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