Patent Search – Why do you want to conduct a prior art search?

2019-04-30 Legal No comment

Patent search from

 Either from

Prior art search from

 It is the most important skill that patent attorneys and patent analysts must learn.

These searches are performed in two types of databases.

One is a list of free patent databases and the other is a more expensive paid database. The principles of patent search remain the same, although the methods of patent search vary from database to database.

Now we do a prior art search to determine a few things. But before you start, you need to understand the definition of the invention and how to determine whether the invention is patentable or otherwise.

What is an invention?

The present invention is a new product or process that is inventive, or in other words, still not obvious to the skilled person and capable of industrial application.

Is the invention patentable? from

  In order to be patentable, the invention must satisfy the novelty test, the inventive steps of the prior art and enable industrial applications.

Novelty test

This determines whether the invention is new. It's that easy.

In general, the international patent examination considers that there is novelty if all of the claimed features of the invention are not disclosed in a single prior art document. In other words, improvements to the prior invention will satisfy the novelty test, as no single document will show all of the features of the improved invention, including original documents or patents that solve the present invention or inventive concept.

Creative step test

The steps of the present invention generally involve that the proposed invention must have at least an improvement over the state of the art and that such modifications are not obvious to those skilled in the art. Now this is two requirements. One skilled in the art should have a technological advancement or significant improvement, and secondly such an invention should not be apparent to those skilled in the art. The first of these two requirements is a bit easier to understand, but the second one is difficult. The second requirement presupposes two things in advance. One of ordinary skill in the art will recognize that such a person should not be aware that the claimed invention is obvious to him in light of the prior art.

What is confusing now is who is the ordinary skill in art?

There are no real or predecessors of the ordinary skill in the art. No one is designated as Patent office to confirm patent In a regular way.

Ordinary technicians are a legal assumption. He is a person who reads everything published in the subject and knows everything related to the subject. So he is considered a domain expert. But experts in this field only have a common level of skill. Therefore, a person of ordinary skill is a person who knows everyone, reads all but does not invent anything or does not need to be a recognized scientist, and does not need to do anything in the subject. But he knows everything in the subject and has complete analytical skills. Therefore, the average skilled person is only the patent examiner who handles your patent application. Now that we are aware of this, we need to understand how to determine non-obvious tests. This is the most difficult part of patentability. If the examiner believes that the creative steps have been established, you are likely to get a patent. This is not your application will be rejected. It is so simple.

The patent examiner determines non-obvious or inventive steps by first listing the main features of the claimed invention regarding the priority date of the patent application.

The priority date of a patent application is the date on which any patent office in any part of the world applies for patent protection for the first time. To apply for a priority date in another country, the patent application must be filed within 12 months of the priority date, if submitted as a convention application, or within 30 days of the priority date [or in some cases 31 months] Submitted as a national phase application for the Patent Cooperation Treaty in other countries.

Let us say that the claimed invention has five key features 1, 2, 3, 4 and 5.

Please pay attention to my words from

Claimed invention from

 This means that only the claims made in the patent application will be examined by the examiner for the patentability, not the specification and other parts of the patent application. Other parts of the patent application must provide prior support for the claim. However, the review is only for claims.

The examiner will now list the documents that teach or depart from one of the key features 1, 2, 3, 4 or 5.

The prior art literature does not require teaching all key features or even more than one key feature. It is sufficient if the teacher either publicly or technically predicts only one of the key features. If the examiner is able to find a prior art document from a patent application issued prior to the priority date of the patent application or a technical journal article published prior to the priority date, he will combine prior art document A for all key features of the above invention. , Teacher Key Features 1, Document B, Teacher Key Features 2, File C, Teacher Key Features 3, File D, Teacher Key Features 4 and File E, reveal key features 5. Then by combining all these files A + B + C + The D + E Patent Examiner will dismiss your application, stating that the claimed invention lacks inventiveness, as will be apparent to those of ordinary skill in the art, in which all references are combined as described above and therefore not patentable.

interesting! Ah.. irritating!! No problem. This is the fact that must be realized and accepted in life.

There is nothing to do.

But this is the way in which patent applications are reviewed and authorized worldwide. This is the procedure for reviewing patent applications.

There are two things here.

By modifying your statement or drafting your statement correctly, you can ensure that the patent examiner does not say that it is not creative and that you can obtain a patent.

it is good

But how do you know that your invention will be patented? How to draft a claim so that the examiner cannot object as it was explained earlier?

This is where the skill set in the patent search or existing art search goes into play.

If you learn how to conduct an existing technology search and what the principles of the search are and how the patent examiner will search to determine and grant or reject a patent, you will be able to determine whether the invention is patentable. You learn to think like a patent examiner and review it like a patent examiner.

Then, you can avoid investing heavily in the R&D process of research and development inventions when submitting and obtaining patents or making investment calls.

You can also determine whether the invention is manufactured and sold, which will lead to the implementation of the patent infringement obligation, and in which countries such violations occur and in which countries, so you can freely market the invention there. It will also teach you how to safely manufacture and sell products that are protected by existing patents in one country but not protected in other countries. If you want to copy and manufacture the latest inventions, you need to set up a manufacturing unit in a country where the patent owner has not yet been protected, and only in countries where the patent owner does not protect his invention.

Therefore, there are many commercial possibilities here because there are approximately 500,000 patent applications worldwide each year. First, about 50% of people are not approved. And those patent applications granted are not protected in all countries. So if you know what you can do and where you can do it, you are free to copy, manufacture and sell them. Of course, you need money and knowledge.

This is the importance of doing or learning to conduct a patent search or a prior art search. In my next article, I will discuss various free patent databases that can be used for patent searches, and I will introduce methods for patent searches in many patent databases in a future article.

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