Patents and Prior Art Search

Author: Karnika Seth

PATENTS AND PRIOR ART SEARCH

In most patent laws, prior art or state of the art (the latter term sometimes has other meanings as well) is all information that has been made available to the public in any form before a given date. If an invention has been described in prior art, a patent on that invention is not valid. A patent must be novel and involve an inventive step, when compared to the prior art. Therefore, if you find a publication dated before the filing date of the patent, and that publication describes all aspects of the invention as claimed, the invention is not novel and the patent is invalid. In most countries, the relevant date is the day of filing of the patent application. If you find a publication that was publicly available before the relevant date, the next step is to compare the publication with the claims at the end of the patent document. You need to identify every single element mentioned in the independent claims in the publication. A claim is independent if it does not refer to another claim (usually in terms like “the device as claimed in claim 3″ or “the device of claims 1-4″). If all elements of the independent claims are mentioned in the publication, you can then do the same with the dependent claims.

If all elements of the independent claims are mentioned in the publication, the subject matter of the independent claims is not novel. If at least one element is not mentioned, the independent claim is novel and may or may not be obvious. The sources of prior art include patents, periodicals, books, and products. Different prior art sources have different values and require different efforts. Patents are the most consistent story-teller of prior art. Periodicals tend to be piecemeal, but can be very on-point. Books are sometimes useful, but are often too general to be more than supportive. Products can be great prior art, particularly as defensive art in litigation, but finding sufficient technical details about some product types, such as old software or electronic products, can be time-consuming.

The primary skill to efficient patent searching is using keywords that narrow the search without eliminating candidate prior art. To be efficiently effective, a prior art searcher must be knowledgeable with the terminology used in the technical field. Other techniques in patent searching include patent cluster analysis using keywords and patent class/subclass, and backward tracing of forward references. A search of all previous public disclosures (prior art) including, but not limited to, previously patented inventions, should be conducted to determine if an invention has been publicly disclosed and thus is not patentable. While a search of the prior art before the filing of an application is not required, it is advisable to do so. If an invention has been described in prior art, a patent on that invention is not valid. In most patent laws, prior art is expected to provide a description sufficient to inform the average worker in the field (or the person skilled in the art) about the invention. Prior art must be available in some way to the public, and many countries require the information to be recorded in a fixed form somehow.

Inventors can perform basic prior art searches to see what knowledge (usually in the form of patents) already exist in the invention’s scientific area although it is advisable to have a professional prior art search conducted thorough a patent expert. To sum up, a basic patent search involves the following steps:
1. Accessing a publicly available patent database
2. Performing a search based on keywords
3. Skimming patents and patent applications that you found.
4. Reading the patent and patent applications in detail
5. Analyse conflicts if any
6. Determine novelty

Conclusion

The “prior art” (i.e., the body of knowledge existing prior to the invention) helps determine whether or not the invention is “new” and “non-obvious.” Thus, it is important to know and understand the prior art by making a professional prior art search so that one can determine distinctions between the prior art (what is already known) and the invention (what is new.)