What is Prior Art Search?

Prior art (sometimes also referred to as a state of the art) is a term that refers to all of the available information that is pertinent to a patent's claims of novelty. Prior art may consist of patents, articles in scholarly or trade journals, conference presentations, products already being sold, and other forms of information disclosure. The purpose of the prior art search is to dig up all of this pre-disclosed material for the sole purpose of exhibiting patentability.

A patent application will be contrasted with the prior art to establish whether it truly specifies a new invention, and whether or not a patent should be issued. While this is just one of the determinants of patentability of an invention, an entrepreneur or an inventor is required to do a comprehensive prior art search prior to filing for a patent. This is not only limited to the patent search, inventors need to search the non-patent literature such as academic and trade journals and publications.

Prior art searching is time-consuming and takes many hours or days involving hundreds or thousands of references. Many types of search tools and techniques have to be employed, and the search will have to be repeated after some period of time so new advancements in the area can be taken into account. Having a patent professional consult is one way to make sure a complete thorough search has been conducted.

What Does a Prior Art Search Include?

Performing a prior art search to ascertain whether a design or process is deemed invention by definition requires several considerations. While it is understandable to perform the prior art search yourself, it could be worth utilizing experts to put an end to any uncertainty regarding novelty or nonobvious nature of any prospective invention.

Prior art searches reveal examples of previously existing inventions. Evidence of which can be produced may be in the form of patent applications, scientific theses, or other written records of an invention or design. These writings assist in verifying or rejecting the novelty and nonobviousness of the invention. Using documents of this nature, the inventor is able to amend their process or invention should they desire to submit a patent application.

Before Invention

Running a prior art search while in the process of invention, as opposed to after the fact, can guide a design process. Knowing where the field stands in which the invention will be working can also guide a design process.

Post Invention

Certain inventions may already exist in your portfolio. A search for prior art will assist you in identifying whether it is truly an invention, so you can make patent applications that can be protected and utilized further towards future profitability.

A patentable invention is an idea or a process. The idea or process should satisfy two requirements:

• Novelty: The invention must possess at least one aspect not copied from any individual prior art.
• Nonobvious: In order to be an invention, the process or design cannot be easily thought up by a person skilled in the area where the invention is to be used. To satisfy this requirement, the invention should be considered in conjunction of several earlier arts or one earlier art, and even common general industry knowledge. The invention should be of industry use. In most jurisdictions, patents are prohibited in some subjects’ mathematical formulae, scientific theory, new plant or animal varieties, etc.

A patent is an investment. In the case that you're holding a potentially valuable invention, it could be an expense to pay. A good prior art search will enable you to make value judgments on the inventions in your patent portfolio.

When to do a Patent Search?

Prior art search is conducted at different stages of product/process development and the objective of conducting it may differ based on the needs. The primary reasons for which the prior art search is conducted are:

1. Prior to patent filing

Inventors can conduct a prior art search for their invention prior to filing for a patent application to ensure that on the filing date of the patent application, their invention is new and there is no published patent or invention prior to filing the patent application.

2. During planning R&D

As a result of excessive competition, nowadays businesses invest a lot of time and money for R&D. A patent search can be conducted by researchers in any specific field of technology to judge the amount of work which is already done, and based on such knowledge, they can organize R&D in a better and more effective way. A prior art search provides a good idea about research already performed in a specific field of technology, and the inventor can further work on it rather than reinventing the same area. Prior art search also gives ideas to develop and enhance the invention by finding out whether the invention has material improvement over prior inventions.

3. Before product launch

A company can conduct prior art search before product launch in a particular market to ensure that it is not infringing the patent rights of any third parties by the product launch. This search is referred to as "Freedom to Operate search (FTO Search)" or "Clearance Search".

4. Technology Landscape studies for developing IP Strategy

The aim of technology landscape study is to comprehend technology trends, competitors' strengths, to gain the latest technology advancements and to study the patent activity concerning technology of interest. Based on technology Landscape Analysis (or referred to as Patent Landscape Analysis), proper IP strategy, in line with business strategy, is formulated for the companies because a solid IP strategy is an integral part of a business plan and growth at any point in time.

5. In opposition or revocation

Whenever any person wishes to oppose or revoke a patent application or a patent, a patent search is required to determine the reasons on which validity of a patent/application will be challenged.

6. Patent Licensing

Patent licensing is the activity of imparting patent rights to third party by the patent owner for a specific duration, within specific jurisdiction. A patent search is conducted at the time of a patent license to identify the strength of the patent by comparing the patent to be licensed with a prior art.

The search of the prior art or patent is crucial for innovation led companies not only to organize research, make decision regarding patent filing but also to develop suitable IP strategies.

Hence, it is essential for the inventors to conduct patent search at the idea stage itself, evaluate possibilities of patentability as well as violation of patent right of third party (ies) prior to investing money and time on research. In order to enable the inventor to decide on the patentability of the invention, it is important to obtain the search in advance.

How to Do a Prior Art Search?

A prior art search is an indispensable step in the procedure to minimize the chances of rejection of a patent application.

Whereas earlier prior art searches would involve complex and cumbersome searches of hard copy documents at the United States Patent and Trademark Office, or USPTO, where patents and supporting documents are kept, it's not so today. Today a prior art search typically involves searching public sources where existing processes and designs details are kept.

A prior art search can be as simple as doing searches through those publicly accessible sources for prior art with details and characteristics common to the provided process or design.

With the details of your design or process, even a Google patent search can be done. Search engines such as Google can assist you in determining if there are any examples of prior art too close to your idea for invention. As mentioned above, an example of prior art too close to your design or process could provide a ground for rejection of a patent application or eventual ineligibility for patent protection.

Though you can do searches of prior art yourself, they take time, and it's easy to overlook something significant if you don't know how to search efficiently. With the volume of data involved in searching for, comparing, and matching process and design details, it is worth hiring professional experts to do this for you who understand what to search for and where to search. A process or design could prove to be a worthwhile invention, and consequently a worthwhile asset in your patent portfolio. Astute business owners equip themselves with the finest tools to maximize potential assets in their portfolio. Intellectual property management specialists prove useful here.

• There is no limitation on the type of publication, so the background art has to be searched in patent and non-patent publications like newspaper, journal presentation, websites, etc.
• There is no geographical limitation of the publication. Global publications have to be always considered
• There is no limitation on the language of the publication
• There is no time limit for prior art. Therefore, the search cannot be limited to the past 20-25 years (as is e.g. the case with an FTO search).
• The search can never be 100% complete since it is by definition impossible to examine all the relevant publications / literature
• Patent filings are published 18 months after the date of filing, and this creates a risk that prior art of relevance is missed because it has not yet been published.
• There could be a delay in the databases for searching or the relevant documents might not be search able to published as they are not OCR published.

Prior art searches not only provide details about the prior art and patentability of the invention but also assist us in knowing how much a new invention may be claimed. Generally, complete prior art searches also assist us in understanding the market situation and crucial competitors in the technical interest area better.

The Prior Art Search Should be Conducted by

• Brainstorming the terms that characterize the invention and looking for them in a patent database
• Using classification (e.g., CPC and IPC)
• Expanding the search to non-patent databases and other sources
• Browsing for competitor patents in the same technical area

Categories of Prior Art Searches

Prior art searching has a layer of complexity. You must know what aspects of the design or process to cross-reference, for instance, and you must have an idea of where to search. There are also four prior art searches:

• Novelty searches assist inventors in identifying the novelty of their design or process. This kind of search will most commonly occur first, since it assists in identifying whether a process or design is worth pursuing for patent application.
• Validity searches are conducted after a patent is granted. They are performed to find out whether there is prior art that the patent office might have missed, in the event that competitors want to challenge validity of granted patents.
• Clearance searches assist you in finding out whether a process or design infringes upon a granted patent or pending patent.
• Landscape searches give an overall high-level review of the broader market landscape setting the context for the prospective invention. This search encompasses recent technological development trends, competitors, recent patent filings, and related technologies.

Prior Art Searches Vs FTO Searches

Prior art search is carried out in the inventor's or prospective patent applicant's own perspective. Its primary goal is to ascertain whether or not an invention is new and has an inventive step, two fundamental conditions for patent grant. This kind of patent search is intended to establish whether there are any earlier disclosures (primarily patents and patent applications but sometimes scientific literature, conferences, manuals, etc.) that may challenge the novelty or inventive step of the invention in question. By contrast, FTO research is conducted from the perspective of a business or organisation wanting to sell a product or apply a process.

Its purpose is to determine whether it can do so without infringing third-party IP rights, namely patents and pending patent applications in force. This type of patent search is directed towards active rights, therefore; i.e. patents less than 20 years old for which the yearly fees (annuities) have been paid and patent applications undergoing examination, which may be infringed by placing on the market or use of the subject technology. Two types of patent searches with special methodologies. The individual who conducts a search prior art will browse patent databases, with no time or terms of languages or nations restrictions, since novelty as assessed by patent offices is absolute novelty and not based on such terms.

The entire document is taken into consideration in the analysis, i.e. the claims but particularly the description and the drawings.

Consequently, a paper written 30 years ago in the Korean language can invalidate novelty or inventive step. Conversely, in an FTO study, only patent applications and patents in the countries relevant to the search are taken into consideration. A document from the US is of no legal value in Europe, hence, so would not be taken into consideration if the study area is restricted to Europe. In the analysis, only the independent claims receive attention from the expert conducting the study, the description and drawings being relevant only to interpreting them correctly. Consequently, documents found in a search for prior art can seldom be used again in an FTO study and, if at all, will have to be re-evaluated keeping this in mind.

Related Article: Combining Patentability and FTO Searches: A Comprehensive Approach

How to Include Patent Searching as Part of Your Global IP Strategy

Performing a prior art search is important for a number of reasons:

• It enables you to evaluate the likelihood of receiving a patent for a specific invention.
• It identifies the most innovative aspects of the invention, and this serves to direct the preparation of the patent application.
• It can disclose potential prior art solutions, which may stimulate alternatives or enhancements to the original invention.
• It finally allows avoiding undue costs associated with patent application filing and prosecution for a non-patentable invention.

A FTO study is also necessary but for other reasons:

• It allows the identification of potential counterfeiting risks before the launch of a product or the use of a process.
• It helps make informed decisions about product development and business strategy.
• It may reveal licensing or partnership opportunities with patent holders.
• It helps avoid costly litigation and potential damage to the company's reputation.
• When to undertake these two types of patent searches

Whereas it is possible to conduct a prior art search at the same time as an FTO study, the best time to conduct each study may be different.

The most appropriate time to conduct a prior art search is often early in the innovation process, after some potential invention has been conceived and before significant resources are being put into its development or commercialization.

More Specifically

• Prior to filing a patent application, in order to evaluate the prospects of success.
• Prior to incurring substantial R&D cost, in order to validate that the innovation effort is properly aimed.
• Prior to seeking out outside partners.
• Intermittently throughout the course of development, in order to consider recent publications that might impact patentability.
• In any event prior to making it public.

By contrast, an FTO study is generally performed at later stages in the development of a product or process, but optimally prior to commercial introduction.

Critical Points are

• When the fundamental features of the product or process are "frozen".
• Prior to final commitment to substantial investments in manufacturing or promotion.
• Prior to penetration of a new geographic region.
• Occasionally during the product life cycle, to cover recently issued patents.
• When planning an acquisition or merger, to determine freedom to operate the target firm's technologies.

Prior Art and FTO: Two Critical Forms of Patent Searches

While different in their purpose and outlook, both patent searches are valuable tools in the strategic management of IP. Prior art search assists in ascertaining whether an invention is eligible for protection by a patent, while FTO studies analyze whether a product or process is capable of being exploited without violating existing rights.

Options if Prior Art is Discovered

If, in a search, prior art comes to hand, the invention (claims) is found not to be new (novel),

• and no third-party rights are potentially being infringed, the invention may be commercialized without having the potential to file a patent.
• and third party rights are likely infringed, an freedom to operate search must be performed
• the invention is possibly patentable
• a freedom to operate search must be conducted

Common Mistakes in Prior Art Searching Which Undermine Your Inter Partes Review

An Inter Partes Review (IPR) is a proceeding conducted by the USPTO's Patent Trial and Appeal Board (PTAB) to cancel particular claims of a patent on grounds that may be asserted under §102 or §103, and solely based on prior art that is in the form of patents or printed publications.

An IPR petition can be brought by any individual who is not the owner of the patent and who has not brought a civil lawsuit to dispute the validity of the patent. IPR proceedings are accessible 9 months from the grant date for patents that were granted under the AIA first-to-file regime and for all patents that were filed prior to the enactment of the first-to-file rule. A petition for IPR should be filed within a year of the service of a complaint of patent infringement. Prior art search is the most crucial component of any IPR to invalidate a patent (subject patent). Here is a list of common top prior art search errors that can most frequently destabilize IPR petitions and trials:

• When the Novelty is Not Fully Understood
• When a Wrong Priority Date is Picked.
• When the Prior Art Search Relies Only on the Claims of a Prior Art Patent.
• When the Prior Art Search Misses NPL References
• When Prior Art Search Misses Actual Products Available at the Time
• When Claim Terms Are Not Construed Correctly
• When the Combination of §103 Prior Art References Would Not Have Been Obvious.
• When Proper Prior Art Search Tools Are Not Used
• When Prior Art Search Results Were Already Cited By Or To The Examiner
• When the Right Experts Are Not Retained

What Does a Prior Art Search Entail?

A prior art search is a preliminary measure to ensure an invention is patentable and new. It ensures the invention does not violate any patents or publications that exist.

The prior art search includes the following:

• Patents: Patents and/or applications searched on databases like USPTO, EPO, or WIPO.
• Technical Journals: Review of scientific publications, research papers, and journals for comparable inventions.
• Online Repositories: Searching websites, forums, and computer archives for relevant disclosures.
• Product Manuals and Specifications: Review user manuals and product specs for similar technologies.

How to Perform the Process Effectively

• Define Search scope: Define significant parameters like keywords, patent classes, and appropriate technology areas for the search.
• Search Patent Databases: Utilize databases such as USPTO, EPO, and WIPO to identify available patents pertaining to your invention.
• Search Non-Patent Literature: Identify relevant publications, scientific articles, and books that could detail similar technologies or concepts.
• Examine the Identified References: Go through the identified references to check their relevance and see if they affect your invention's novelty.

Through these steps, companies can carry out a thorough and effective prior art search.

Challenges in Prior Art Searching

Performing a comprehensive prior art search can prove to be challenging based on several hindrances. The challenges contribute to it being more challenging to identify and evaluate pertinent prior art, which is instrumental in establishing patentability.

Some of them are as Follows Which Play a Vital Role in Establishing Patentability

• Quantity of Information: There is plenty of patent and non-patent literature available, which makes it difficult to locate the most relevant documents.
• Unreliable Non-Patent Literature: Non-patent literature, however, is not invariably indexed in the traditional patents' databases, thus rendering it hard to search for.
• Patent Claim Ambiguity: Technical terminologies and patents' unclear language are misinterpreted, leading to wrong assumptions.
• Global Differences in Patent Law: Different jurisdictions have different patent law and database structure, which makes foreign prior art searching difficult.

Real-Life Examples of Prior Art Search Outcomes

Here are some of the examples wherein prior art searching was the cornerstone of the patent application process:

1. Apple vs. Qualcomm - Patent Infringement Suit

Apple and Qualcomm engaged in a severe patent battle over cellular phone technology, i.e., modem chip technologies.

Prior art search was a mirror to the huge portfolio of standard-essential patents (SEPs) belonging to Qualcomm, which Apple supposedly infringed. According to Qualcomm, Apple was infringing its patented technology without right.

Thanks to the pre-search of prior art, Qualcomm had a high possibility of holding ground, and the case was resolved on a multi-billion-dollar scale. This is a demonstration of how indispensable prior art searching is in patent disputes, specifically handling SEPs.

Qualcomm was granted a handsome settlement because of its portfolio of patents and prior art searches to back up its infringement& claims.

Let us come to the Samsung-Apple case later, in which prior art was also the major issue.

2. Samsung vs. Apple - Patent Case Over Slide-to-Unlock Feature

There has been a well-publicized patent case wherein Apple sued Samsung for violations of the "slide-to-unlock" feature of smartphones.

During the discovery stage of the case, a search for prior art found that Apple's design was not unique since the same mechanisms of unlocking had already been patented in the past.

The court hence held that Apple's patent was less novel as mooted, and the case was withdrawn in certain courts.

The search for prior art ultimately derailed Apple's case, producing inconsistent verdicts in various courts. Let us move on and discuss Google's experience with prior art in patenting Google Glass.

3. Google - Patent Invalidity Over Google Glass Technology

Google struggled to patent its Google Glass technology. It performed a prior art search wherein it discovered that other prior technologies were patented. They included heads-up display technology, as well as augmented reality systems that closely resembled Google Glass.

Since the prior art search showed such similarities, Google's legal department was in a position to prove that their innovation differed. After some time, they managed to do this by resubmitting their application with emphasis on differences.

Google won, and their efforts paid off as they were in a position to fight the patenting of the Google Glass technology even when faced with prior art.

How to find Prior Art when Numeric Ranges are Part of the Claim Elements?

Searching for prior art is a fundamental part of patent examination, opposition, and litigation. However, when the patent claim comprises numerical ranges, it is more challenging to find prior art that mentions similar numerical ranges. Finding prior art by using number ranges is a harder method compared to keyword search. Numerical values are not supported by most searching tools, together with keywords. There are some techniques and methods one can use to find impactful prior art and avoid the complexities of numerical ranges.

1. Digitization and OCR problems may occur when older patents may have been digitized from scanned documents, leading to OCR errors, which in turn cause misinterpretations of ranges or numbers. Numerical ranges are opaque if numerical ranges occur in diagrams or images that are hard to search with text queries.
2. Multiple representations of the same concept could be represented by different ranges of numbers or even a single word, resulting in ambiguity for search algorithms such as "1-10," "one to ten," or "between 1 and 10." They could be specified with different units of measurement, such as logarithmic scales, or mm, cm, and inches.
3. Complex mathematical expressions in search can become a lot tougher if the same range is represented by different symbols or variables.

The strategies for effective numerical ranges in prior art search must use advanced search tools, like Patseer, Derwent Innovations, etc. While performing a search on numerical ranges in patents, users can better use the range operators and do not stick to exact numbers.  Analyzing the numerical range might be included in diagrams, tables, images, or charts. These are not easily indexed by text-based systems, making it harder to locate them using conventional tools. An image identification and visual search can assist in finding. This is not possible while searching prior art; those are not accessible through typical text-based searches. Use shared platforms on which scholars and patent examiners can share and discuss findings on challenging searches.

How we Found Prior Art in Doctorate Thesis?

In intellectual property, prior art is the foundation for patentability determinations. While patent examiners generally turn to published patents and scientific journals, the search must occasionally dig deeper. We came across important prior art concealed not in a patent database or high-impact journal - but in a doctoral thesis nestled quietly in a university library. The case study discusses approach and success in finding prior art in doctorate thesis, which is critical for successfully opposing patent claims.

At Effectual Services, we are constantly on the hunt for the most impactful prior art to challenge the validity of our opponent's patents. Although granted patents and journal articles are the most popular sources to explore, university libraries also include a multitude of doctorate thesis and dissertations that might provide useful prior art. In order to find the most relevant issued patents, our prior art search approach usually starts with thorough patent database searches that make use of sophisticated Boolean queries utilizing classification codes, citation search, similarity search, semantic, Assignee, Inventor based search and AI search. Next, we broaden our search to include scientific and technical literature, looking through databases such as Elsevier, IEEEXplore, and Google Scholar to find relevant non-patent literature (NPL).

Research work especially doctoral thesis are often containing cutting-edge innovations that predate key filing dates of the patents we aim to challenge. This focused approach of domain-specific keywords combined with Boolean search expressions to explore doctoral thesis in areas closely aligned with the patent claims in challenged. This targeted strategy allowed to filter through a vast amount of academic content and zero in on potentially significant sources. This involves scanning metadata, keywords, and abstracts to determine more relevant thesis. Using the thesis title and author’s name from these references, we expanded our search across the likely university archives, particularly those where the author may have completed their Ph.D.

A more accurate approach is not just scanning keywords from the thesis titles, but also relevant academic departments that might have overseen the research. This process successfully locates the doctoral thesis, giving us valuable insight into earlier research that significantly overlapped with the patent claims.