Intellectual property (IP) stands as a prized asset, cherished by individuals and businesses alike for its significant value.
Whether it’s a groundbreaking invention, a unique design, or a creative work of art, protecting your intellectual property is crucial to safeguard your innovations and creativity. One essential aspect of this protection is conducting prior art searches. In this blog post, we will delve into the world of prior art searches in intellectual property, exploring what they are, why they matter, and how to perform them effectively.
What Is Prior Art?
Prior art refers to all publicly available information that could potentially be used to invalidate or limit the scope of a patent, trademark, or copyright. It serves as a foundational concept in intellectual property law because it helps determine whether an invention or creation is genuinely novel and non-obvious. Prior art can take various forms, including:
- Patents: Information on previously granted patents that relate to the same technology or invention.
- Scientific Journals: Published research papers, articles, and technical documents that discuss similar concepts.
- Publications: Books, magazines, and other written materials that may contain relevant information.
- Websites and Online Databases: Information found on the internet, in databases, or on websites.
- Publicly Available Products: Any existing products or technologies that are publicly accessible.
What is the significance of conducting prior art searches?
Prior art searches are essential for several reasons:
- Determining Patentability: For inventors, conducting a prior art search is the first step in deciding whether their invention is novel and non-obvious enough to be eligible for patent protection. It helps avoid investing time and resources in pursuing a patent for an idea that may already exist.
- Avoiding Infringement: Businesses and individuals must ensure that their products or services do not infringe upon existing patents or trademarks. A prior art search can identify potential infringement risks.
- Defending IP Rights: If someone challenges the validity of your patent or trademark, a thorough prior art search can help strengthen your position by demonstrating the uniqueness and non-obviousness of your IP
Okay, but there must be something in the prior art that cannot be used against an inventor, right?
So, what is not considered prior art?
Any information that is not published in a real substantial manner is not considered as prior art. For example, if someone knows some information in their mind and there is no proof of its existence, then it cannot be considered as prior art. Based on your business objective, you can pick for different patent searches:
- If the inventor wants to understand the existing state of their invention and make better strategic IP decisions, landscape study or landscape search is what an inventor must go for.
In this study, patents and non-patent literature are analyzed. A landscape search provides a bird’s eye view of the technology. A complete landscape report consists of patent references and other technical documents such as scientific works of literature and analytics of the entire study. Major players (IP owners) and underlying technological information are extracted. Major benefits of performing a landscape study are:
- Business owners or business developers who are interested in knowing the top players in the technology gain more insight into the market and plan acquisitions and other related licensing projects.
- Research groups, academicians, and scientists looking to gain knowledge and an overall view of the technology to follow up on their research.
- Marketing and competitive intelligence teams, in-house legal counsel teams, or human resource teams that carry out a landscape study to understand what the competitors are up to and their potential products that are in the pipeline that might help the teams build market strategies and hire the right technologists.
2. Looking to launch your own product? Execute what is known as an FTO(Freedom-To-Operate) search.
If you are considering setting your product in motion and taking a cautionary step of not infringing a similar patented invention in the market, then FTO search is for you. FTO means Freedom-To-Operate. It is also known by various other names such as infringement analysis, clearance search, etc. The FTO report post-analysis gives a legal opinion on whether a product or a process will potentially infringe an existing patent or patents owned by other inventors or assignees.
Unlike a landscape study, FTO search is only restricted to active patents (i.e., patents that are not expired/revoked). Scientific literature or other form of information apart from patents are not considered relevant to the study. The date and jurisdiction restriction are extremely important in an FTO search. A time period of 20 years before the date of search is essentially considered. In most cases, FTO search is only restricted to the patent claims. In an FTO study, the key features of the product are compared with the claims of the existing relevant patent applications. It is advised to always conduct an FTO search in the early stages of R&D. There will always be room for changes, and you should end up with a product that is unique from the existing art.
If your invention is found to be infringing an active patent, there are several ways to go about it, like:
- Look for a license by getting written authorization from the owner of the patent.
- Try and invent around the document that seems to be getting infringed. Conduct steering research around the invention and tweak the claims of the product or process in making.
3. My invention is ready and I want to file a patent on it, what search is most suitable? A Patentability search:
This search focuses majorly on the novelty criteria of an invention. A patentability search usually takes less amount of time and includes all types of publications (patent documents and non-patent documents). It is different from that of a landscape study as the latter does not primarily focus on the novelty criteria.
To get a patent for your invention, the three main criteria are novelty, non-obviousness, and industrial application. Hence performing a search to see whether your invention is novel or not must be the main reason why you choose a patentability search. For this search, along with patent claims, the description section of the patent becomes important too.
A fine practice before filing a patent would be to perform a combinatorial search of patentability and FTO. The benefits from both the studies are numerous as clear from the abovementioned information.
4. Do you think your competition is copying your patented invention? Perform an Invalidity search, also known as an opposition search.
If you are looking to reinforce your patent portfolio and invalidate competitor’s patent(s), then an invalidity search is the most suitable for you. It is similar to that of a patentability search, except for the fact that in an invalidity search, there is a high focus on the claim section only.
There might be several reasons to invalidate patent claims, A few of them are:
- The claims of the existing patent might be obvious or outdated.
- The invention might not be novel as there is prior art found before the filing or priority date (whichever is earlier).
If the claim(s) of the patent application is/are invalidated, it might result in revocation of the patent application. The opposition might take place pre- or post-grant of the patent application. Invalidity search involves patent documents and non-patent documents (such as scientific literature).
5. Other important types of searches that are seldom performed are the biosequence search and the Markush structure search.
Biosequence is a short form for biological sequence and is a continuous molecule of a nucleic acid or a protein. DNA sequences, protein and nucleic acid sequences, and peptide sequences become a part of Intellectual Property if a patent application claims them as a part of their invention. Hence bio-sequence searching increases the chance of getting a target patent.If your invention covers any bio-sequences, looking for prior art and patent claims that hold similar bio-sequences becomes important before you go for patent filing. Many databases have a dedicated section for patents and non-patents that contain/claim biosequences.
Markush structure is a chemical structure consisting of symbols representing certain chemical structures and chemical groups. If you are an inventor who is looking to file a patent on a novel and unique chemical structure, then doing a markush structure search is of utmost importance. There are consigned databases available to search markush structures and patents and non-patents covering them.
Therefore, before considering filing or drafting a patent application for your invention, it is always advised to have a thorough look at the existing and prior art. Nothing should make an inventor or a patent owner forgo of a professional prior art search. A professional searcher is much more aware and equipped with better tools online which yields maximum chances of landing the right and relevant results.
Exploring the Spectrum of Prior Art Searches
When it comes to protecting intellectual property (IP), conducting prior art searches is an indispensable step. These searches are crucial for determining the novelty and patentability of an invention, avoiding infringement on existing patents, and strengthening the defense of IP rights. However, not all prior art searches are the same. In the realm of Intellectual Property, there are several types of prior art searches, each serving a specific purpose. In this blog post, we will explore the spectrum of prior art searches and their significance.
**1. Novelty Searches
Novelty searches, also known as patentability searches, are often the first step for inventors and creators seeking patent protection. The primary goal of a novelty search is to determine whether an invention is truly novel and non-obvious. Here’s how it works:
Scope: The search focuses on prior art related to the invention’s key elements and concepts.
Purpose: To uncover any prior patents, publications, or technologies that might invalidate a patent application.
Outcome: If the search reveals closely related prior art, it may indicate that the invention lacks novelty and should not proceed for patenting.
**2. Infringement Searches
Infringement searches are conducted by individuals or companies who want to ensure that their products or services do not infringe upon existing patents. These searches are critical for avoiding costly legal disputes and ensuring compliance with IP laws:
Scope: The search aims to identify patents and IP rights that could potentially be infringed upon.
Purpose: To determine whether a product, service, or design may violate someone else’s intellectual property.
Outcome: If potential infringement is detected, the searcher can take steps to modify their product or seek a licensing agreement to avoid legal repercussions.
**3. Validity Searches
Validity searches are typically performed when the validity of an existing patent or IP right is challenged. This could be part of litigation, dispute resolution, or due diligence:
Scope: The search seeks to find prior art that could render an existing patent invalid or limit its scope.
Purpose: To assess whether a patent or IP right is legally sound and defensible.
Outcome: If strong prior art is found that questions the patent’s novelty or non-obviousness, it can weaken the patent’s position in a legal dispute.
**4. State-of-the-Art Searches
State-of-the-art searches are comprehensive searches conducted to gain a thorough understanding of the current state of technology or knowledge in a specific field. These searches are not limited to a single invention or patent but cover a broader spectrum:
Scope: The search encompasses a wide range of relevant prior art, including patents, publications, and emerging technologies.
Purpose: To stay informed about the latest developments in a particular field or to identify opportunities for innovation.
Outcome: These searches provide valuable insights for research and development, helping individuals and organizations make informed decisions about future projects.
**5. Freedom to Operate (FTO) Searches
Freedom to Operate (FTO) searches are conducted by businesses to assess the risk of launching a new product or service without infringing on existing patents or IP rights:
Scope: The search focuses on patents and IP rights that may affect the intended business operations.
Purpose: To identify potential IP obstacles or risks that could hinder the launch of a product or service.
Outcome: If significant IP roadblocks are discovered, a company may need to reevaluate its business strategy or consider licensing agreements.
How to Perform an Effective Prior Art Search?
Performing a thorough prior art search is a meticulous process that requires attention to detail and an understanding of the relevant IP databases and resources. Here are the key steps:
Define Your Search Scope: Clearly define the scope of your search by identifying the key elements, keywords, and concepts related to your invention or creation.
Use Online Databases: Utilize online patent databases like the United States Patent and Trademark Office (USPTO), European Patent Office (EPO), or WIPO PatentScope to search for relevant patents and patent applications.
Consult Professional Search Services: Consider hiring a professional patent search firm or a patent attorney with expertise in prior art searches. They have access to specialized tools and databases and can provide valuable insights.
Search Non-Patent Literature: Look beyond patents and explore scientific journals, technical publications, and other non-patent literature sources that may contain relevant information.
Document Your Findings: Keep detailed records of the documents you find, including publication dates, author names, and publication sources.
Evaluate the Relevance: Analyze the documents you’ve collected to determine their relevance to your invention or creation. Not all prior art will be pertinent to your case.
Consult an IP Attorney: If you’re unsure about the results or need legal advice, consult with an intellectual property attorney who can guide you through the next steps, such as patent filing or trademark registration.
Conclusion
Prior art searches in Intellectual Property are not one-size-fits-all endeavors. Depending on your goals, whether it’s obtaining a patent, ensuring compliance, or safeguarding your IP rights, you may need to perform different types of searches. Understanding these distinct search types and their purposes is crucial for making informed decisions in the complex world of Intellectual Property. Ultimately, a well-executed prior art search can be the key to unlocking innovation, avoiding legal disputes, and protecting your intellectual assets in today’s competitive landscape.