What is a Patent Prior Art Search & How It is Done?
Prior Art is the technical or scientific information that is in existence prior to the filing of the patent application by an inventor. The information must be in the public domain, such as books, publications, processes, brochures, conference papers etc. to qualify as Prior Art. It becomes an important subject when applying or a patent or seeking to invalidate an existing one. Let’s delve deeper into the intricacies of how to prior art search.
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What is a Prior Art Search?
In simple terms a prior art search is an organized investigation into the existence of any public information that may have existed before a patent was/is filed. It helps in ascertaining if a patent meets the UPSTO patent filing requirement of being novel or non-obvious.
It is used not just by innovators but is also of consequence to universities, researchers, companies, IP practitioners (IP agents, attorneys etc,) and potential investors.
Significance of a Prior Art Search
- To determine the uniqueness of an invention before filing for a patent. A prior art search will reveal any pre-existing knowledge similar to the patent. This helps evaluate the patentability of the invention.
- To ensure due diligence. Before acquiring a patent or investing into one, it makes business sense to assess the value of the patent. This may be done by conducting a prior art search to depict similar inventions present in the market.
- To boost R&D. Periodically conducting prior art search can act as a source of inspiration and ideas for the R&D Department. Additionally, they can help prevent duplication and save revenue.
- To detect infringement. A prior art search can both prevent a company form unknowingly infringing on a patent as well as expose any infringement on their own invention.
- To track competitor’s activities. An added benefit of a prior art search is that it helps monitor new trends in your competitor’s research.
- The potential of a prior art search in rendering industrial information, identifying competition, offering economic value and providing IP Protection has made it crucial in today’s scenario.
The Four Phases of Prior Art Search
To conduct a comprehensive search is it imperative that all knowledge sources are thoroughly scrutinized. This amounts to a gigantic data pile that needs to be sieved for relevant information. The Prior Art Search is best carried out in detailed phases as listed below.
The foremost step is to compile a list of keywords that may be used in connection to the patent. To ensure wide coverage, one must be mindful of uncommon keywords i.e., old jargon, terms & definitions specific to industries, translated terms from literature in other languages etc. A combination of suitable keywords is likely to yield favorable results.
It is common practice to search for patent in patent and scientific databases. Most innovators rely heavily on patent data bases for accurate data. The following tools will be extremely helpful in conducting a prior art search:
- Google Patents Search Engine
- Database of Canadian Intellectual Property Office (CIPO)
- Database of PATENTSCOPE application database of the World Intellectual Property Organization (WIPO)
- Searching the Espacenet EU patent and patent application database of the European Patent Office
- Searching the patent AND patent application databases of the United States Patent and Trademark Office (USPTO).
- Patent Lens
- Specific databases that pertain exclusively to the patent information.
Since the UPSTO assigns classes and sub-classes while classifying, it is best to search as many documents as possible for a particular keyword so as to not miss out on any.
Thereafter, all additional patent documents that reference the keyword must also be scrutinized. This practice is referred to as “forward and backward” cross-reference search and is extremely helpful.
Since prior art is not confined to patents but extends to any knowledge in the public domain, it is best to widen the search scope to include additional sources like:
- Scholarly Publications that can be accessed on Google Scholar
- E-Book sites like Amazon
- Journals, thesis, books, articles, and other similar literature.
- Websites of companies dealing in similar tech.
Compiling and saving all the relevant data from the search results is the concluding step to your prior art search. This repository serves as a guide of points to present to the UPSTO when you wish to cite a prior art reference.
While one may conduct a prior art search on their own, timely assistance from experts is an added bonus that simplifies the entire process and makes it uncomplicated. At TT Consultants we follow the latest methodology to derive best results for your prior art search. We use an open search with different search structures for a wide-ranging search.
In addition, multiple patent/non-patent databases are meticulously analyzed for using cutting edge tools like XLSCOUT which is capable of extracting concealed information from competitors. In short, you can completely rely on us for a sound prior art search done effectively and efficiently.