Prior art – Prior art or state of the art or background art in most systems of patent law constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality. If an invention has been described in the prior art, a patent on that invention is not valid.
It is therefore of no surprise that prior art searching is a key offering by IP Firms and IP Service Providers and a key part of the work conducted by the Patent Examiner at the Patent Office.
Patent prior art search
Search is a critical issue as far as the patenting process is concerned. It is important that the non IP professional people involved such as the inventor community understands this and in many cases are provided with good professional help and support in this area.
In general, a search is conducted on a specific date to help identify current technology status at that date, effective patents at that date, and publications available on or before at that date.
Public databases and search functionality
There are a number of very good public databases and associated search engines available which can be utilised by anyone, not just IP professionals. Some free patent search tools are listed here.
- USPTO – http://www.uspto.gov/patents-application-process/search-patents
- EPO – https://worldwide.espacenet.com/
- UKIPO – https://www.gov.uk/search-for-patent
- WIPO PatentScope – http://patentscope.wipo.int/search/en/search.jsf
- PatentLens – https://www.lens.org/lens/search
- Google – www.google.com/patents
Others are more research focused, such as …
Other search locations also exist which provide better filtered results, and “depending on the subject” can be more productive. These include IEEE, Google scholar for thesis, technical forums, and institutions who hold conferences in the key art area of interest.
The ‘Wayback’ machine should also be considered. The Wayback Machine is a Web site that enables anyone to see what a particular Web site looked like at some time in the past – from 1996 to the present. This enormous archive of the Web’s past requires hundreds of terabytes of storage and contains almost 500 billion Web pages at present !
Also meta data search engines exist that are low cost but let you only enter the terms once, but search a list of sub search tools, and can be more focused. They often hold the results so that you can go back to them as often as you like.
A key point to note is that one should never never just save a web link when searching, as the web is always changing. Instead one should take a screen shot (e.g. with snagit to pdf).
Searching for existing products / services of interest
A search should be conducted of existing products / services of interest …
- with similar structure
- with similar benefits
When similar products / services are found, then the searcher should maintain certain details, such as …
- data sheets
- manuals describing the operation of the product
While conducting product searching, it is useful to note the companies, product names and keywords used in the industry.
Search for non patent literature of interesting
A search should be conducted of published literature (research papers, thesis documents, articles and papers) of interest
The searcher should log the title of the paper, the name of author(s) and the date of publication
Similarly, when searching through non patent literature, it is useful to note the companies, authors, and keywords used in the industry.
Searching for existing patents of interest
The searcher should conduct a search for similar existing published patent applications or granted patents …
- patents with similar structure
- patents with similar benefits
When conducting patent search, the searcher should utilize output from the product and non patent literature searches, namely the company names, authors, product names, and keywords for the search.
When a relevant patent is found, then further checks should be conducted per the inventor and company names. Further forward and background searches should be conducted using citation information.
Reasons for conducting searches
For many, the main reason or conducting a search will be to identify possible prior-art. However, it would be stressed that there are many reasons for conducted such searches …
- Prior-Art Search: Helps to identify prior art (if any) for the inventive idea. Also, helps in defining the scope of the claims before filing with the Patent Office
- Competitive Intelligence
- Patent data mining of competitor patent portfolio to assess strengths and weakness on IP landscape
- White Space Study
- Research on complete patent landscape in a defined area technology area, clustering of patents in technology areas and deriving insights. What has been protected (dense areas) and what is left further to explore (less dense or the white space)
- Freedom to operate
- Helps in mitigating risks by identifying the claims that can effect the product at launch. The study also helps in understanding the design around efforts
- Invalidation Search
- Helps in knocking off the claims of patent, which is asserted against the company by others (such as NPEs or competitors)
As stated earlier, a prior art search is conducted on a specific date to help identify current technology status at that date, effective patents at that date, and publications available on or before at that date.
I trust that this simple overview is of interest and of value. A follow up paper will explore the subject of prior art search in much more detail.
Donal O’Connell 3 November 2016
Donal is an experienced IP consultant specialising in the areas of innovation and intellectual property management. Donal is founder of Chawton Innovation Services and now a consultant at K2 IP, the network of patent and trade mark attorneys and IP consultants developed by Keltie LLP. Screen shots are taken from Chawton Innovation Services’ Ash inventive ideas capture & review tool.