Do you know the importance of a Prior-Art Search? If you wish to protect an idea, you must know some vitally essential things before filing a patent. Otherwise, your idea can’t qualify as an invention. Further, it is essential to remember you cannot patent a mere idea as an idea as it is usually theoretical. Many people think innovative ideas cannot attain patents as they are not inventions.
An invention must fulfil specific patentability criteria laid down by the USPTO. This is where Prior-Art Search comes into the forefront. These criteria can vary across jurisdictions. Generally, 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 that is not present in any single prior art;
- It must be non-obvious: It must have at least one characteristic or feature that is novel; and
- It must have the industrial application: Most jurisdictions bar patenting in specific areas like 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?
It would help if you met the criteria of novelty and non-obviousness to patent your invention. A Prior-Art Search is an undertaking to ascertain whether an invention is non-obvious, unique, and new or not.
The Process of Obtaining a Patent
Obtaining a patent can be expensive because you must pay several fees. These include filing fees, attorney fees, and an examination fee. Discounted official fees also apply to small enterprises and individual inventors in almost all jurisdictions. However, the overall cost of protecting the invention can be typically high. It is chiefly so when the investor wishes to safeguard their invention in several jurisdictions.
It is advisable to conduct a Prior-Art Search yourself or engage a professional before commencing the patenting process. You can identify the invention’s novel and inventive features and decide which jurisdictions to file.
The importance of Prior-Art Search
There are several advantages of conducting a Prior-Art Search. They are:
- It can help avoid wasting 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. Prior art search is similar to the due diligence exercise since it too can reduce the risk of the rejection of your patent application.
To conduct a Prior-Art Search, you must first understand what can act as prior art in contradiction of the patent application. Any granted patent, article, published patent application, research paper, book, web page, or video can be prospective Prior-Art for the patent application.
Processes of a Prior-Art Search
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A typical Prior-Art Search process requires a search strategy that you can formulate at the beginning by using a name, keyword, classification, citation search, or a combination thereof.
First, you need to identify all of the critical features of the invention in the keyword search. Then you have to determine the keywords and their contextual synonyms from the invention’s key features to articulate search strings that will run on patent and non-patent databases.
Additionally, you may acknowledge patent classes, inventors, and applicants relevant to the field of the invention and use them in the search strings to refine the search strategy. Further, you may analyze all the search results manually to shortlist the most relevant Prior-Arts.
Therefore, only the abstract and the search results title should be the ones to read for the first screening level. The other sections of the search results can be visible at the second screening level, only if required. After shortlisting the relevant prior-arts, you must check their citations to ascertain more relevance and results around the shortlisted ones.
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It is a great idea to try several search strings to ensure you have all combinations in check. One can never argue with certainty that no prior art exists since the search requires training, skills, and practice.
However, an investor should 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.