Prior-Art Search is indispensable if you wish to protect an idea. Most certainly, there are some vitally important things you most certainly need to know before filing a patent. Otherwise, your idea can’t qualify as an invention. Further, it is essential to remember that you cannot patent a mere idea as an idea till it is only theoretical. Many people phantom such great and innovative ideas; however, they cannot attain patents as they are not inventions.
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By the rules laid down by the USPTO, an invention must fulfil specific patentability criteria. These criteria can vary across jurisdictions. Generally, for Prior-Art Search, the term ‘invention’ means a unique process or product. In addition, the invention must adhere to the following rules:
- It must be novel: It must have at least one characteristic or feature which is not present in any single prior art;
- It must also be non-obvious: Prior-Art Search must have at least one characteristic or feature, which is novel. Additionally, it should not be evident to a person skilled in the field of the invention given common general knowledge and combination of multiple prior arts or a single prior art; and
- It must have the industrial application: Most jurisdictions bar patent in specific areas such as new animal or plant varieties, scientific theory, algorithms, treatment methods, mathematical formulas, business methods and software etc.
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What is a prior art search?
The criteria of novelty and non-obviousness need to be met for an invention to be patented. Thus, a Prior-Art Search is an undertaking to ascertain whether an invention is non-obvious, unique, and new or not.
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The Process of Obtaining a Patent
Obtaining a patent can be expensive because several fees must be paid. These include a filing fee, attorney fees, and an examination fee. Discounted official fees apply to small enterprises and individual inventors in almost all jurisdictions. However, the overall cost of protecting the invention can be typically high, chiefly when the inventor wishes to safeguard their invention in several jurisdictions.
Generally, it is advisable to conduct a Prior-Art Search yourself or engage a professional to do the needful before commencing the patenting process. On the basis of findings the prior art search, the invention’s novel and inventive features can be identified, and a decision can be made regarding which jurisdictions to file.
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The importance of Prior-art Search
There are numerous advantages of conducting a prior-art search. They are:
- It can help avoid wastage of both money and resources in prosecution proceedings and patent filings if the invention is not unique. Further, it allows R&D centres to use their IP budgets wisely.
- It helps in identifying the closest prior-arts. Thus, it can distinctly define the scope of protection in patent claims. Additionally, it reduces the prosecution time, thanks to the need for fewer claim amendments and office actions. The prior art search is similar to the due diligence exercise since it too can reduce the risk of the patent application getting rejected.
To conduct a prior art search, you must first understand what can act as prior art in contradiction of the patent application. Any publicly available evidence that can prove an invention is already known or obvious is prior-art. Any granted patent, article, published patent application, research paper, book, web page, or video can be prospective prior-art for the patent application. The prior art search is straightforward, and anyone can carry it out (but it’s always a wise choice to hire a professional). Many times, an inventor may not be as familiar with the prior art search process as a professional searcher. Nevertheless, there are many search engines and patent databases and for novice users.
A typical prior art search process necessitates a search strategy that should be formulated at the beginning by using a name search, keyword search, classification search, citation search, or a combination thereof. First, all of the critical features of the invention are identified in the keyword search. Then keywords and their contextual synonyms are determined from the invention’s key features to articulate search strings that will run on patent and non-patent databases.
Additionally, patent classes, inventors, and applicants relevant to the field of the invention may be acknowledged and used in the search strings to refine the search strategy. Further, all the search results must be analyzed manually to shortlist the most relevant prior-arts. Therefore, only the abstract and the search results title should be read for the first level of screening. The other sections of the search results should be seen at the second screening level, only if required. After shortlisting the relevant prior-arts, their citations can be checked to ascertain more relevancy and results around the shortlisted ones.
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To ensure all permutations and combinations are covered, it is always a great idea to try several search strings. However, a prior art search will remain complete. One can never argue with certainty that no prior art exists since the search requires training, skills, and practice.
However, an inventor should nevertheless attempt to carry out an all-inclusive and comprehensive prior-art search to minimize the risk of invalidation of the granted patent or rejection of the patent application later.
After the search and everything is done, the next step is to write the application to the respective patent office. An attractive application requires patent drawings which can help the examiner understand the invention quickly.
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