Prior art search – the gold standard

By Donal O’Connell

Prior art

Prior art or state of the art or background art in most systems of patent law constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality. If an invention has been described in the prior art, a patent on that invention is not valid.

It is therefore of no surprise that prior art searching is a key offering by IP Firms and IP Service Providers and a key part of the work conducted by the Patent Examiner at the Patent Office.

But what constitutes a good or rather a comprehensive, thorough professional high quality prior art search. This paper aims to define the ‘gold standard’ with respect to prior art searching.

Patent prior art search

Search is a critical issue as far as the patenting process is concerned. It is important that the non IP professional people involved such as the inventor community understands this and in many cases are provided with good professional help and support in this area.

In general, a search is conducted on a specific date to help identify current technology status at that date, effective patents at that date, and publications available on or before at that date.

Public databases and search functionality

There are a number of very good public databases and associated search engines available which can be utilised by anyone, not just IP professionals …

Some of patent specific such as …

Others are more research focused, such as …

Other search locations also exist which provide better filtered results, and “depending on the subject” can be more productive. These include IEEE, Google scholar for thesis, technical forums, and institutions who hold conferences in the key art area of interest.

The ‘Wayback machine should also be considered. The Wayback Machine is a Web site that enables anyone to see what a particular Web site looked like at some time in the past – from 1996 to the present. This enormous archive of the Web’s past requires over 100 terabytes of storage and contains 10 billion Web pages!

Also meta data search engines exist that are low cost but let you only enter the terms once, but search a list of sub search tools, and can be more focused. They often hold the results so that you can go back to them as often as you like.

A key point to note is that one should never just save a web link when searching, as the web is always changing. Instead one should take a screen shot with snagit to pdf.

Searching for existing products / services of interest

A search should be conducted of existing products / services of interest …

  • with similar structure
  • with similar benefits

When similar products / services are found, then the searcher should maintain certain details, such as …

  • data sheets
  • brochures
  • manuals describing the operation of the product

While conducting product searching, it is useful to note the companies, product names and keywords used in the industry.

 Search for non patent literature of interesting

A search should be conducted of published literature (research papers, thesis documents, articles and papers) of interest

The searcher should log the title of the paper, the name of author(s) and the date of publication

Similarly, when searching through non patent literature, it is useful to note the companies, authors, and keywords used in the industry.

Searching for existing patents of interest

The searcher should conduct a search for similar existing published patent applications or granted patents …

  • patents with similar structure
  • patents with similar benefits

When conducting patent search, the searcher should utilise output from the product and non patent literature searches, namely the company names, authors, product names, and keywords for the search.

When a relevant patent is found, then further checks should be conducted per the inventor and company names. Further forward and background searches should be conducted using citation information.

Many inventors, especially first time inventors, may not be comfortable conducting patent searches, and may require the assistance of a patent attorney or patent search specialist to help conduct such work.

Main reasons for conducting searches

For many, the main reason or conducting a search will be to identify possible prior-art. However, it would be stressed that there are many reasons for conducted such searches …

  • Prior-Art Search: Helps to identify prior art (if any) for the inventive idea. Also, helps in defining the scope of the claims before filing with the Patent Office
  • Competitive Intelligence
  • Patent data mining of competitor patent portfolio to assess  strengths and weakness on IP landscape
  • White Space Study
  • Research on complete patent landscape in a defined area  technology area, clustering of patents in technology areas  and deriving insights. What has been protected (dense areas)  and what is left further to explore (less dense or the white  space)
  • Freedom to operate
  • Helps in mitigating risks by identifying the claims that can effect the product at launch. The study also helps in understanding the design around efforts
  • Invalidation Search
  • Helps in knocking off the claims of patent, which is asserted against the company by others (NPEs or competitors)

Types of searches which can be conducted

There are a variety of different type searches which can be conducted. In reality, there is much similarity between these different searches, the key difference being the rationale for conducting the search …

  • Novelty / Patentability / Pre-examination Search
  • State-of-the-Art or Collection Search
  • Validity / Invalidity Search
  • Clearance / Infringement Search
  • Freedom-to-Operate/Right-to-Use Search
  • Accelerated Examination Search (US Only)
  • Industrial Designs Search
  • Opposition Search
  • Patent Watch (Technical & Legal Status)
  • Chemical Structure & Sub-Structure Search, Markush  Searching
  • Biological Sequence Searching (Proteins, Nucleic Acids)
  • Non-patent Literature Searches
  • Patent to Product Mapping
  • Patent Landscaping

The search process if outsourcing the task

Many will outsource or offshore this ‘search’ work to a 3rd party. These are the suggested steps in the process …

  • Request for search to be conducted
  • Clarification
  • Proposal (approach, level of detail, price, delivery date,  options)
  • Agreement and instruction to proceed
  • Search report (categorisation and ranking where appropriate)

The skills and competencies of the searcher

It is important that the searcher has the right skills and competencies to perform the task …

  • Intellectual Property Office / Patent Office examiner experience
  • Industry and R&D experiences
  • Technical qualifications
  • Information technology qualifications
  • Language skills
  • IP skills and competencies (specifically related to searching and prior art)
  • Prior search experiences

Quality approach by the searching entity

It is imperative that there is a quality ethos held by the entity conducting the searching. This may be seen in the following areas …

  • Quality review for all search reports (a second pair of eyes)
  • Consistency in searching practices (sharing of best-practice)
  • Certification for ISO 9001 quality management standards  (process driven)
  • Docketing database for all search requests
  • Client / searcher contact encouraged
  • Regular training sessions for the searchers
  • Documented guidelines for different search types

 Basic principles for searching

Experienced searchers have typically gained skills and competencies in such areas as …

  • How to approach different search types
  • Where to find relevant art
  • What databases to search
  • Time to spend with each data source
  • Recommended total time to spend
  • Reporting formats & minimum content
  • Tips & tricks

Patent search methodology

Experienced searchers have an in-depth understanding of most if not all of the following areas …

  • Keyword searching and full-text databases
  • Experience with multiple databases
  • Understanding of data and search engine limitations
  • Language skills
  • In-depth Classification knowledge – ECLA, USPCL, IPC,  Japanese F-Terms, ICO
  • Chemical structure searching expertise – STN, Registry,  Markush
  • Bio-sequence searching expertise -DGENE, USGENE,  PCTGENE, etc.
  • Value Added Database, e.g. Derwent expertise
  • In-depth understanding of patent families
  • Expert knowledge of legal status codes / reassignments
  • Access to US patent office resources
  • Access to non-patent literature resources, e.g. British Library  and expert knowledge of non-patent literature databases
  • Access to university libraries
  • Ability to search foreign language sources, e.g Chinese,  Japanese and Korean especially
  • Understanding of how to maintain value for any budget

The selection of key search terms is of critical importance. People often only search the terms in the document created or provided and forget to first think of the alternatives that may be used. Some are alternatives but others may be a more correct term or common short hand in that art area.

The search report

This section deals with the typical contents of a prior art search report conducted to evaluate patentability of an invention. One may wish to get quite limited reports to keep the costs under control, however, you should ideally see the following …

A short summary about what was searched (to check that searcher has understood the invention correctly)

Explanation how search was done including …

  • classes used in search (IPC, EPC, and/or USPTO classes)
  • search terms and search term combinations used
  • database(s) used
  • search “target”, i.e. was search conducted by searching search terms from title, abstract, claims or specification
  • info about what non-patent documentation was searched and how

Search results, typically just as a list of patent numbers (preferably including links to documents e.g. in USPTO database or in ESPACENET. Sometimes one may wish to also assignee names and abstracts also included.

It may be beneficial to have information about patenting trends relating to the searched invention included.

Such information may help in deciding whether to file a  patent application or not.

One additional aspect to consider when ordering prior art  searches relates to duty to disclose all relevant material in  USA, i.e. IDS (Information Disclosure Statements) that one  needs to file for their pending US applications

Some people don’t want to learn too much about prior art  because they are afraid that search results may contain  documents invalidating their patents / patent applications but  it is better to find those out yourself because in litigation those would be found out most likely anyway

A suggested table of contents may therefore be as follows …

  • The key meta data search words used and the order, as this can act as a filter on results since most search tools have a limit on how may results they give
  • The search tools used such as search engines, meta data search tools, data bases, news groups etc
  • Patents found
  • White papers found
  • Conferences abstracts or papers
  • Thesis
  • Articles in press
  • Web links (if a good search they will be saved as pdf not just links, as the web changes and you may not be able to go back and the result could be key evidence)
  • Other items  (such as video or  audio files, clips from demos, trade fairs, new reports)
  • A conclusion (which found items are just background, which found items are closest, which found items would kill the invention)
  • Some indication of the completeness of the search conducted.

 The typical costs and timescales

Input needed – Description of the inventive idea
Search – Both patent and non patent databases
Timescales (for a simple search) – 5 working days approx
Costs – 500+ Euros
Deliverable – Search report containing list of documents found plus their relevancy

More detailed searches are possible, but then costs would increase

 Legal process outsourcing

India is a prime market for LPO and there are many companies offering LPO services including patent search services in the territory. Many of those businesses didn’t have much to offer beyond  their initial sales presentations. They made grandiose claims about the skills and services they could provide, but in reality  most didn’t actually have much experience. It really is buyer- beware. There’s a lot of activity in the marketplace, but only a  handful are safe business partners. There are however third-party suppliers with experience to bring to  the table, who have stability and longevity in the legal services market.

Help and support

There is some good educational material available …

Google prior art finder tutorial …

http://www.youtube.com/watch?v=T20l8v40gzY&feature=youtu.be

Espacenet assistant …

http://application.epo.org/wbt/espacenet/assistant.php?lg=en

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