Patent Search - Why Should You Do Prior Art Searches?

By Ramaswami Natarajan
Patent Search or Prior Art Search is the most important skill that beginning Patent Agents and Patent Analysts must learn.

These searches are conducted in two types of databases.

One is a list of Free Patent Databases and the other is more expensive Paid Databases. The principles of Patent Search remains the same though the methods of doing the patent search will vary from database to database.

Now we do a Prior Art Search to ascertain several things. But before going it to it you need to understand the definition of Invention and how an invention is determined to be patentable or otherwise.

What is an Invention?

An invention is a Product or Process that is New, have inventive step or in other words remain non-obvious to a skilled person and is capable of industrial application.

Is the invention patentable? To be Patentable an invention must meet the Test of Novelty, Inventive step over prior art and be capable of Industrial application.

Novelty Test

This determines if the invention is New. As simple as that.

Usually International Examination of Patents take that Novelty is present if all the claimed features of the invention are not disclosed in a single Prior art document. In other words an improvement over an existing invention will meet the Novelty test for no single document will show all the features of the improved invention including the original document or patent that taught the invention or inventive concept.

Inventive Step Test

Inventive step is usually involves that the proposed invention must have at least improvement over existing state of the art and that improvement must not be obvious to a person skilled in the art. Now these are two requirements. One is that there should be technical advance or significant improvement in the technology invented and secondly such an invention should not be obvious to a person skilled in that specific Art. The first of these two requirements is bit easy to understand but the second requirement is tough. The second requirement presupposes two things. That there is a person of ordinary skill in the Art and that such a person should not feel that the proposed invention is obvious to him in the light of the prior art.

Now the confusing thing is who is the Person of Ordinary skill in the Art?

There is no such real or ex person as Person of Ordinary Skill in the art. No one is designated as such by the patent office for the purposes of determination of patentability in a regular way.

A person of ordinary skill is a legalistic assumption. He is a person who reads all things that are published in the subject matter and knows everything relating to the subject matter. So he is considered a domain expert. But this domain expert has only the skill level at an ordinary level. So essentially a Person Of Ordinary skill is a person who knows all, reads all but has not invented anything or need not be a recognized scientist and need not have achieved anything in the subject matter. But he knows every thing in the subject and has full analytical skills. So effectively a Person of Ordinary Skill is nothing but the Examiner of Patents who handles your patent application. Now having realized this we need to understand how the test of non-obviousness is determined. This is the most difficult part to meet in patent-ability. If the examiner feels that the inventive step is established, you are likely to get a patent. It not your application is going to be refused. It is as simple as that.

Patent Examiners determine Non Obviousness or Inventive Step by listing out the key features of the claimed invention first with respect to the priority date of the patent application.

The priority date of the patent application is the date on which it is first filed for patent protection in any patent office anywhere in the world. To claim the benefit of priority date in other countries the patent application must be filed within 12 months of the priority date if it is filed as a convention application or within 30 (or in some cases 31) months from the Priority Date if it is filed as a Patent Co-operation Treaty National Phase Application in other countries.

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

Please note my words Invention as claimed and this means that only the claims made in the patent application will be examined for patent-ability by the Examiners and not the specification and other parts of the patent application. The other parts of the patent application must provide antecedent support to the claims. But the examination is done only for the claims.

Now the examiner will list out documents that teach or disclose the each one of the key features 1, 2, 3, 4 or 5.

A prior art document need not teach all the key features or even more than one key feature. It is enough if it teaches or discloses or technically speaking anticipates just one of the key features. If the examiner is able to find prior art documents either from patent applications published earlier than the priority date of your patent application or technical journal articles published prior to priority date, for all the key features of the invention as explained above, he will combine the prior Art document A that teaches key feature 1, Document B that teaches key feature 2, Document C that teaches key feature 3, Document D that teaches key feature 4 and Document E that disclosed key feature 5. Then by combining all these documents A+B+C+D+E the Patent Examiner will reject your application saying that the invention as claimed lacks inventive step, is obvious to a person of ordinary skill in the art when all the references are combined as stated above and therefore is not patentable.

Interesting! Ah..Irritating!! No Problem. This is the fact of life that must be realized and accepted as a fact.

Nothing can be done about it.

But this is how Patent Applications are examined and granted all over the world and this is the procedure of examination of patent applications..

Now there are two things here.

By amending your claims or by properly drafting your claims, you can ensure that the Patent Examiner will not say that it lacks inventive step and you can get a patent.

O.k

But how do you know that your invention is going to be granted a patent? How do you draft the claims so that the examiner cannot object as explained earlier?

This is where the skill sets in Patent Search or Prior Art Search comes in to Play.

If you learn how to do a Prior Art Search and what are the principles of doing that search and how a Patent Examiner will do that search to determine and grant or refuse a patent, you will be able to decide if the invention is patentable or not. You learn to think like a Patent Examiner and examine like a Patent Examiner.

And then you can avoid a lot of expenses in filing and obtaining patents or in making an investment call to make an investment to invest in a research and development process for inventing an invention.

You can also determine whether the invention if manufactured and marketed will result in the commission of the offense of Patent Infringement of any existing Patent and in what countries such infringement will occur and in what countries it will not occur and so you are free to market the invention there. It will also teach you as to what are the countries you can safely manufacture and market a product which is protected by an existing patent in one country but not in other countries..So if you want to copy and manufacture the latest invention you need to set up manufacturing units in one country where the patent owner has not obtained protection and can sell them only in those countries where the Patent owner has not cared to protect his invention.

So a lot of business possibilities are present here because every year about 500,000 patent applications are filed all over the world. About fifty per cent of them are not granted in the first place. And those patent applications that are granted are not protected in all the countries. So you are free to copy, manufacture and market them if you understand what can be done and where it can be done. Of course you need to have the capital and the know how for this.

This is the importance of doing or learning to do Patent Searches or Prior Art Searches. In my next article I will discuss the various Free Patent Databases available to do Patent Searches and I will proceed in future articles about the methodologies of doing Patent Search in a number of patent databases.

Ramaswami Natarajan a Patent Attorney in India co-founded TMPsearchers.com and designed the India Patent Agent Examination Course syllabus and search interface of India Patent Database and India Trademark Database both of which are provided by TMPsearchers as online searchable databases. He has trained more than 100 scientists and Attorneys in Patent Search and US Legal Research and lectures on Patents in many Engineering Colleges and in the Indian Institute of Technology, Chennai as a guest faculty on behalf of Vilgro.org. He also conducts an on-line Free Course attended by more than 20000 persons at the website of TMPsearchers. Living in Chennai, south of India, he had handled projects on US legal research, and offshore back office support for database preparation and maintenance.