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THE PRIOR ART SEARCH

Developing the Inventive Concept

Prior to conducting a prior art search, you need to carefully and practically identify and develop your invention. The following points will help in developing your inventive concept:

Determine the unmet need or problems in the current technology and the problem that your invention solves. An invention is any tangible creation that provides a solution to a problem. You can go about your everyday life detecting problems that need to be solved and thereafter come up with solutions to the detected problems. The solution to the problem may lie in an idea, a physical element, a structure, a feature, a method step or an improvement of an existing idea, physical element, structure, feature or method step.
Determine whether your invention falls within the statutory classes defined by a patent office for an invention. For example, the United States Patent And Trademark Office (U.S. PTO) defines the following statutory classes for an invention: a new process, machine, article of manufacture, composition of matter, and a new and useful improvement thereof. Your invention may also be a new design for an article of manufacture or a new asexually reproduced plant variety.
Determine whether your invention falls within the statutory classes defined by a patent office for an invention. For example, the United States Patent And Trademark Office (U.S. PTO) defines the following statutory classes for an invention: a new process, machine, article of manufacture, composition of matter, and a new and useful improvement thereof. Your invention may also be a new design for an article of manufacture or a new asexually reproduced plant variety.
Determine the novelty of your invention. Your invention should not be publicly known to others anywhere in the world. The newness or novelty of an invention lies in the fact that the invention has a new structure, produces a new result, has a new method of producing a known result, or a new use for an existing product.
What Constitutes Patentable Subject Matter? As explained in Chapter 1, you can protect the utility of an invention, an ornamental design of an invention, and asexually reproduced plant varieties. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” Therefore, it is relatively easy to classify your invention into at least one of the above mentioned areas.On the other hand, inventions such as perpetual motion machines, and inventions related to laws of nature, physical phenomena, mental processes, abstract ideas, literary and artistic works, etc. do not constitute patentable subject matter. Although scientific truths are not patentable, you may be able to patent a novel structure developed using knowledge of the scientific truth.Moreover, although computer programs and algorithms are not patentable, the use of the computer program or algorithm to control hardware to produce a useful, concrete, and tangible result can be patented. With regard to business methods, the recent Bilski decision held that a business method is surely patent eligible if 1) the method is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.After you have developed your invention and you have concluded that the invention constitutes patentable subject matter, you can proceed to conduct a prior art search to determine whether your inventive concept is new and non-obvious.
The Importance of the Prior Art Search: A prior art search for the inventive concept is important for at least three reasons. First, it determines whether the inventive concept is new and patentable. Second, it allows you to draft the claims as broadly as possible but just narrower than the prior art. Third, it reduces prosecution history estoppel when the patent application is prosecuted by not requiring the claim to be amended.You cannot assume that your invention is new and non-obvious. This kind of an assumption may result in unnecessary expenditure of time and money in having to redraft the claims of the patent application. The prior art search will help you decide whether your inventive concept is patentable and whether you can obtain a patent. You can determine the patentability of your inventive concept based on its utility or design. If the utility or design is new and non-obvious, you can conclude that your inventive concept is patentable. The prior art search will also give you useful information on existing developments in the field of your invention. Knowledge of existing developments will help you further improve your inventive concept by determining additional embodiments to your invention that can be used to expand or refine your invention. Developing improvements to your invention can later be used to broaden the scope of your patent application. The prior art search will also help you determine the commercial practicability and assess the commercial potential of your invention.If the search proves that your invention is not patentable, you can avoid investing a substantial amount of time and money in producing and marketing your invention.
Prerequisites for Patentability of an Invention: The prerequisites for patentability of an invention are novelty and non-obviousness. For an invention to be considered novel, you need at least one element (or method step) or a combination of elements (or method steps) in your invention that is not explicitly discussed or identically disclosed in a single prior art reference.With reference to non-obviousness, a patent may not be obtained “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” Shortly after the Supreme Court’s decision in KSR v. Teleflex , the U.S. PTO announced its examination guidelines for determining obviousness. Under KSR, “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” The Guidelines state that while the Graham factors remain the basis for obviousness determinations, patent examiners must make the following factual inquiries:
1. Determine the scope and content of the prior art.
2. Ascertain the differences between the claimed invention and the prior art.
3. Resolve the level of ordinary skill in the pertinent art.
In addition, patent examiners must also evaluate “objective evidence relevant to the issue of obviousness”. The Guidelines emphasize that the teaching-suggestion-motivation (TSM) test in the absence of any other supporting argument for obviousness may rely on additional rationales to support their determinations. These additional rationales include:
1. Combining prior art elements according to known methods to yield predictable results.
2. Simple substitution of one known element for another to obtain predictable results.
3. Use of known techniques to improve similar devices (methods, or products) in the same way.
4. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results.
5. “obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one if the variations would have been predictable to one of ordinary skill in the art; and
7. Some teaching, suggestion or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art teachings to arrive at the claimed invention.
Relevant Prior Arts: Any information in the public domain, for example, publicly available writings, literature documents including patent and non-patent literature documents, articles from books, magazines, catalogs, journals, etc. that exist or have been published prior to a provable date of conception of your inventive idea and that explicitly discuss or identically disclose your inventive concept constitute relevant prior arts. Furthermore, anything that is known publicly irrespective of the date of patenting or first publication, will be deemed relevant prior art. It is important to understand and be familiar with the prior art to be able to distinguish your invention from what is already out there in the same field of your invention.For a claim to be literally infringed by an accused (i.e., allegedly infringing) product or method, every limitation set forth in the claim must be found in the accused product or method, exactly. A claim may be infringed by a product either literally or under the Doctrine of Equivalents of a country’s patent system as described later in this book.
Types of Searches: The inventor may perform the following types of searches or get in touch with a professional searcher or a patent attorney/agent to perform a professional search.
Patentability Search: The patentability search is also referred to as a novelty search. The patentability search will help you determine whether your invention is new enough over the prior art in order to be patentable. The patentability search also allows an inventor to determine and therefore broaden the scope of the invention in a patent application to allow for maximum patent protection.If the results of the patentability search show that all the elements of the invention are explicitly disclosed in a single prior art reference and therefore that the invention is not new, the inventor can decide to discontinue the patent filing process, a process which requires a lot of time, effort, and moneyIf the results of the patentability search show that there is a risk of infringing the claims of a prior art patent, the inventor may work towards designing the invention around the prior art reference.
Validity Search: The need for a validity search arises when an examiner at a patent office overlooks a prior art reference, fails to disclose it during patent prosecution, and therefore issues a patent mistakenly. Therefore, when a product that is being made, sold or used infringes on the claims of a granted patent, the manufacturer of the product may be sued. The product manufacturer will need to invalidate the patent in question in order to prove that his product is non-infringing. The validity search will help the inventor to locate prior art that invalidates the claims of the patent, thereby precluding the patent owner from suing the manufacturer of the product. The validity search is performed on current patents which can be used as a disclosure. It is important to note that while a patentability search is performed on the general idea or the entire patent, the validity search is performed to establish prior art that is relevant to the validity of the claims of the patent. You are not required to consider prior art references that have already been mentioned on the front page of the subject patent as these references have already been examined by the U.S. PTO.The results of the validity search can be used as evidence to invalidate the claims of the subject patent, thereby showing that the subject patent should not have been issued as a patent in the first place in view of the prior art references and that the inventor of the subject patent was not the first to file or develop the invention.The filing date of the patent application is significant as only prior art discovered before the filing date of the subject patent can be used to invalidate the claims of the patent in question.
Infringement Search: The purpose of the infringement search is to determine if the features of a product or invention read on every element of the claims of active or unexpired patents. Therefore, an infringement search requires a thorough and careful review of the claims of unexpired patents. You do not need to be concerned about non-patent literature while performing an infringement search.If the search results of the infringement search show that there is a risk of infringing the claims of a prior art patent, pay special attention to the date of issue of the patent and if the patent term has expired, you can try to prove that the invention is in the public domain.
Non-patent Literature Search: The non-patent literature search includes a search of publicly available writings, literature documents, articles from books, magazines, catalogs, journals, research publications, thesis, etc. that are not patent documents. The non-patent literature search will provide you with an informative background on the field of your invention and helps you assess the commercial potential of your invention.
State of the Art Search: A state of the art search is performed to identify developments in the current field of the invention and the current state of technology in that field. A state of the art search will apprise an inventor of all patents filed in a particular field. This search will help the inventor identify and explore different areas of improvement in a particular field.
Guidelines for Performing a Prior Art Search: The following list provides you with the steps you should to follow to perform a comprehensive prior art search.
1. List out the method steps or system components that you use to achieve the end result or final step in your invention.
2. Break the inventive concept into different elements, components, or parts. Summarize the invention in an effective manner that will help a searcher clearly understand the invention and its utility.
3. Create and consolidate your list of keywords and synonyms.
  - Determine generic and specific keywords from common terms and synonyms describing the invention, its structure, function, and end result. An example of a generic keyword is “cylinder”. A specific keyword equivalent to “cylinder” would be, for example, “tube” or “pipe”.
  - Derive synonyms, equivalent terms, and words analogous to the keywords determined in the previous step.
  - Explore alternative vocabularies describing your idea or invention.
  - Consider variations of word constructions/hyphenations and word combinations, for example, “multi-layer”, “multilayer”, and “multi layer”.
4. Construct single and combinational queries with different field codes using Boolean expressions, for example, AND, OR, and NOT as explained in the section on the U.S. PTO search phase of this chapter.
5. Perform a preliminary search in web search engines, for example, the Google™ search engine to identify key players and companies that manufacture similar products or that provide similar services. Also, get in touch with experts and find out names of pioneers in the field so that you can examine their intellectual property. This will help you cover substantial prior art in the field of your invention. Prepare a list of company names and inventor names in the field of your invention.
6. 6. Perform a free patent search for U.S. patents in the United States Patent And Trademark Office (http://uspto.gov/), for international patents in Google™ Patents (www.google.com/patents), WikiPatents™ (http://www.wikipatents.com/), Free Patents Online (http://www.freepatentsonline.com/), WIPO’s PatentScope® (http://www.wipo.int/patentscope/en/), http://www.patents.com/, etc. or have a professional search performed on a subscribed database, for example, Thomson Reuters Delphion (http://www.delphion.com/).
7. Utilize the keywords in suitable search fields in different databases. For example, while performing prior art patent searches, search in the Claims, Title, Abstract, Specification, and Assignee/Inventor name fields in the patent databases.
8. Utilize wild card characters in your search to incorporate different and broader versions of a word in a single query.
9. During your search, identify alternatives and synonyms that can be used as new keywords to augment the pool of documents exposed in subsequent patent searches.
10. Perform a class search in the relevant classes and subclasses of the patent databases.
11. Perform an inventor based search and an assignee based search in the “Inventor” and “Assignee” search fields of the patent databases respectively using the list of inventors and companies that you prepared.
12. Review the entire specification of the relevant patents/patent applications and not just the claims. The ideas disclosed anywhere in a patent/patent application deems the ideas as prior art.
13. Review the drawings of the relevant patents. The drawings will help you identify the main invention disclosed in a patent/patent application and help you quickly narrow down your search results.
14. Prepare a comparison chart of the elements of your invention with those of the relevant prior arts that you find. This will help you identify the novel elements in your invention in view of the prior arts.
The U.S. PTO Search Phase
1. You may access the U.S. PTO’s patent server at the link: http://patft.uspto.gov/. At this link, you can perform a search of U.S. issued patents and patent applications. The issued patents are those that have been granted by the U.S. PTO. The patent applications are those applications that have been published by the U.S. PTO for opposition and are undergoing examination.
2. Click on the “Advanced Search” link on either the “Issued Patents” section or the “Patent Applications” section depending on where you wish to perform your search. It is important that you perform a search in both sections.
3. Perform a keyword search in the searchable fields of the U.S. PTO database. The U.S. PTO provides a list of field codes and their definitions for the searchable fields of a patent document out of which ACLM, SPEC, CCL, AN, and IN represent the claims, the specification, the class, the assignee, and the inventor fields respectively and are the most helpful.
4. Construct your queries by using combinations of field codes and Boolean expressions. For example, if you are looking for patents/patent applications related to publishing content on a website, you may use the query “publish” AND “content” AND “network” OR “internet” AND “website”. The following is a list of example queries that will help you search the different sections of patents/patent applications.
  - The query “publish” AND “content” AND “network” OR “internet” AND “website” will search for the terms “publish”, “content”, “network”, “internet”, and “website” throughout the text of the patent documents.
  - The query ACLM/”content” AND “publish” will search for the term “content” in the claims section and the term “publish” throughout the text of the patent documents. Therefore, a list of patents/patent applications having the keyword “content” in the claims section will be displayed. The keyword “publish” may appear anywhere in the text of the patent documents, not necessarily in the claims.
  - The query ACLM/content and ACLM/publish will search for the term “content” and “publish” in the claims section of the patent documents. Therefore, a list of patents/patent applications having the keywords “content” and “publish” in the claims section will be displayed. The keywords “content” and “publish” may appear separately in the claims section.
  - The query SPEC/”publishing content” will search for the phrase “publishing content” throughout the specification of the patent documents. Therefore, a list of patents/patent applications having the combined words “publishing content” in the specification of the patent documents will be displayed.
  - The query ACLM/”content” AND SPEC/”publish” will search for the term “content” in the claims section and the term “publish” throughout the specification of the patent documents. Therefore, a list of patents/patent applications having the keyword “publish” in the claims section and the keyword “content” throughout the specification of the patent documents will be displayed. This query will provide the same results as the query ACLM/”content” AND “publish” mentioned above.
5. Note that $ is a wild card that can be used in the U.S. patent database search. For example, “transmi$” will search for “transmission” OR “transmissions” OR “transmitting” OR “transmit” OR “transmits” in the U.S. PTO database.
6. Patent Number Search: You may search for a patent with a known patent number using the “Patent Num” link on the U.S. PTO website.
7. Class Search: Make note of the classifications cited in the relevant patents that you find and identify the classes that are cited most frequently on the first page. The U.S. PTO lists the current U.S. class and the current international class in every patent. You will find the class definitions of every class in the Manual Of Classification by entering the class/subclass at the linkhttp://www.uspto.gov/go/classification/. Review the descriptions of your classes of interest, as well as adjacent classes to verify that the classes are relevant to the technology that you are seeking. You can perform a class search in the U.S. PTO database by entering the query CCL/”class number/subclass number” AND “keywords” in the search engine query box. The classifications cited in a relevant patent will help you narrow down your search results as all the patents in a certain field of an invention are identified by the same class. For example, if you use the query “publish” and “content” in the issued section, you may obtain a list of 3291 patents containing those keywords. A review of each of these 3291 patents will consume a lot of time and may even be irrelevant. To narrow down the list, use the field code CCL to obtain relevant patents of a particular class. Therefore, if you use the query CCL/715/202 AND “publish” and “content”, your list of results will narrow down to 25 thereby making it easier for you to find other relevant patents in the same class in a lesser amount of time.
8. Inventor/Assignee based search: Quite often, the same inventor(s) or assignee will file a group of patents that are associated with improvements of their invention. Make note of the inventors and assignees cited in the relevant patents that you find. This will help you determine if the same inventor or assignee has other relevant patents in the same field of your invention. Use the field code “IN” in your query to search for patents/patent applications of a particular inventor and the field code “AN” in your query to search for patents/patent applications assigned to a particular assignee. The inventor and assignee search will also help you determine if known inventors or companies from common knowledge or from your preliminary search have patents in the same field of your invention. For example, if you are aware that Microsoft® Corporation deals with products and services related to content distribution, developer tools, servers, etc. you can use the query AN/”Microsoft” with other relevant keywords to find patents filed by Microsoft for those types of products. You may also use combinational queries with the class of a patent and the assignee name to obtain results that are more relevant.
9. Examine all the references cited on the front pages of the relevant patents that you find. These references will help you identify similar relevant patents and other classes that can be used to help you in subsequent searches.The references cited on the front pages of the relevant patents comprise prior patents that the U.S. PTO determines to be technologically relevant to the starting patents.Some databases, for example, Thomson Reuters Delphion provides backward references of a particular patent. Ensure that you examine all the backward references as these will help you identify additional relevant patents. The chances of finding a prior art very relevant to the current inventive concept in the list of backward references are quite high.

Design Patent Search

You can perform a design patent search by using specific codes defined by patent databases. For example, if you are looking for only design patents in the U.S. PTO database, use “apt/4” in addition to your keywords. For example, if you are looking for design patents on chairs in the U.S. PTO database, use the query apt/4 and “chair” in the search engine query box. Similarly, you can use the kind code “S” in Delphion in addition to your keywords in suitable text fields to obtain design patents in the Delphion database. Note that you can query for design patents only in the “Issued Patents” section in patent databases as design patent applications are not published for viewing.

The International Search Phase

You may perform a prior art search for international patents in a patent database provided by a particular country or in consolidated free or subscribed databases. The search process will remain the same as explained above. If you wish to perform an international search in the Thomson Reuters Delphion database, you will have to subscribe to the database or hire a professional searcher who has access to the database. Please note that any idea, invention, or technology disclosed or patented anywhere in a world is considered prior art and hence it is important to perform an international prior art search.

Delphion: You may enter the Delphion website using the link https://www.delphion.com/ and by accessing your user account. You will have to select the collections on which you wish to perform your search. For example, if you wish to search for U.S., European, German, Japanese, Patent Cooperation Treaty (PCT) patents/patent applications, etc., select the relevant boxes and proceed to construct your queries in the text fields. You may search in the inventor, assignee, title, abstract, claims, description, and attorney, agent or firm text fields. You may also search in the date and code fields. Delphion also allows you to perform a search in U.S. specific fields, for example, the U.S. class, references, etc. Delphion also allows you to download patent documents in the portable document format (PDF) of Adobe Systems Incorporated.
WIPO’s PatentScope® You may enter PatentScope® of the World Intellectual Property Organization (WIPO) at the link http://www.wipo.int/pctdb/en/index.jsp. PatentScope® provides you with an interface as shown in the screenshot in Fig. 2.8 to perform a structured search of the Patent Cooperation Treaty (PCT) applications. “The PCT facilitates the obtaining of protection for inventions where such protection is sought in any or all of the PCT Contracting States. It provides for the filing of one patent application (“the international application”), with effect in several States, instead of filing several separate national and/or regional patent applications.” PCT applications have been explained in detail in Chapter 9.
Other Search Engines: You may further perform international patent searches in the other search engines as mentioned below:
1. 1. Patent Lens (http://www.patentlens.net/patentlens/structured.cgi)
  2. Free Patents Online (http://www.freepatentsonline.com/).
  3. http://www.patents.com/
  4. Patent Analysis (http://www.patentanalysis.com/)
  5. PatAnalyst™ (http://www.patanalyst.com/)
  6. MicroPatent PatentWeb® (http://www.micropatent.com)
  7. PatBase (http://www.patbase.com)
  8. TotalPatent™
    You may obtain the patent documents of granted and published patent applications, for example, at www.pat2pdf.org, http://www.patentlens.net, www.delphion.com , etc.
The Search Report
As explained above, a thorough prior art search will help you determine if your invention meets the prerequisites for patentability, that is, novelty and non-obviousness. If you have a professional search performed, your patent attorney/ patent agent should provide you with a search report and a patentability opinion stating whether your invention is new and non-obvious over the prior art.If the search report shows that your invention is new and non-obvious, you can proceed to draft and file a patent application for your invention as explained in Chapter 3 of this book.If you find every feature of your invention explicitly discussed in a single prior art reference, you may conclude that your invention is not novel or is anticipated by a prior art reference. The applicable U.S. PTO regulation (MPEP § 2131) reads, “To anticipate a claim, the reference must teach every element of the claim.” A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference”. The identical invention must be shown in as complete detail as is contained in the “claim”.On finding that your invention is not new and is obvious, you may either discontinue the patent application process or consider including improvements to your invention to overcome valid prior art references. You may still be able to obtain a patent, if you can achieve any of the following:
1. Make new improvements to your invention.
2. Add at least one new element, step, component, or feature to the existing invention.
3. Implement a new method of reaching the end result
4. Redevelop the structure of your invention.
5. Find a new utility of your invention.
6. Find a new combination of elements that would not be obvious.
A thorough analysis of your invention and the prior art references would therefore be required to proceed to file a patent application. After the analysis, perform a follow up search for patentability of the refined elements/combination of elements of your invention.

Patents

The Prior Art Search

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The Prior Art Search

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