Patent Prior Art Search

What is a prior-art search?

Prior art, the term mostly used during patent applications, is used to describe all information available in the public domain before the priority or filling date of the patent application. This information is related to the patent applications. Prior art includes other patent applications, publications, presentations at conferences, existing products on the market, and other documents available to public domains.

The primary criterion for a patent to obtain a grant is that it should be new, novel, or applicable at the industrial level. Here, the condition novelty of a patent is determined by a prior art search, according to Sections 2(1)(l) of the Indian Patent Act. This means that an invention should not be anticipated by documents, products, or publications in the country or elsewhere before the priority or filling date of the patent application, whichever is earlier. Prior art search determines the merits of patent applications.

Novelty and prior art search report-

An idea can only be regarded as an invention if at least one technology significantly used for the development is completely new, novel, and its application, even at a small part, can impart a significant difference at the commercial prospect of the idea. It is not necessary for all the technologies to be novel. Sometimes, using some known technologies in a novel combination at a proper place can give rise to an effective; these types of inventions without any prior art report can also be considered for patents. Several bacteria, such as Pseudomonas sp. and Klebsiella sp., are independently used as biofertilizers to treat plants because they can improve nitrogen nutrition in their host. This is well known and has been reported in many studies, and such biofertilizers are also available in the market. Now, suppose a patent is filed with proof that the combination of these two bacteria along with a mycorrhizal fungus at a defined concentration, along with improvement of nitrogen nutrition, can also protect plants from pathogen attacks and improve heavy metal tolerance. The invention can be patented as for the first-time researchers have shown such effects with consortia of bacteria and fungi. Thus, the primary criterion for obtaining a patent is that the methods and technologies described in the patent application should not be described or used for the same purpose earlier.

Importance of prior art search-

A prior art search determines the merits of patent applications. Before investing a significant amount of money and time in developing an invention, researchers should perform a thorough prior art search. The current absence of a prior art search does not signify its permanent absence, and continuous updates are necessary to develop this idea.

Even if a researcher conducts a prior art search before patent application, the patent office examiner will perform the same process to check whether the invention is anticipated by any prior art according to Section 13 of the Indian Patent Act. This prior art search report is a conclusive result from the patent office regarding patent applications before publication on their official website.

Key points in prior art search-

• Choosing the proper keywords for the search engines is critical for obtaining the maximum relevant results in a prior art search or in patent search. Sometimes, along with the most obvious keywords, people look for closed words or synonyms. A new term regarding the invention should be included in the keyword list to obtain the most helpful search results.
• Articles available on social media platforms are also considered prior art. They should also be verified and checked properly to move forward with the research.

Depending on the type of search, prior art search can be divided into two types-

i) Product search, ii) Patent search

i) Product search: Commercially available products were included in prior studies. Before moving to the invention stage, researchers should be concerned about the products available in the market, and deal with the same obstacles. Historic and current sources of information are necessary for prior art research. Sometimes, researchers participate in exhibitions and trade shows for products under development that are not yet in the market. These products may also have been used in prior studies. Academic researchers prefer to present their work at conferences and academic exhibitions, so they should also be in mind of the new researcher before starting their experiments. Sometimes, offline store visits are also important for updating the inventions.

ii) Patent search: Patent searching on the official websites of different countries using keywords helps to obtain ideas about filled and granted patent applications. Publications is also important aspects of prior art search. Different websites are available to guide innovators before filing the patent application to perform patent search. Databases regarding patent application history are available at the following sites-USPTO from the United States of America patent office, WIPO from World Intellectual Property Office, Espacenet from European Patent Office, IPO from Indian Patent Office),AusPat from Australian patent office, J-PlatPat from Japanese patent office, etc.

Academic researchers play an important role, as most of the time, they are concerned about publication, not patents. However, the information available in the public domain was considered prior to art. PubMed and Google Scholar are recommended as research article references.

Types of patent research-

Before patent filling, research on the product as well as on the references present in the public domain are the two crucial steps inventors should perform. Patent research to investigate the prior art search can be classified into three categories-

1. Text searching
2. Patent classification searching
3. Patent citation searching
   
   Text searching– Before text searching, it is necessary to identify the main concepts related to invention. Then, different words related to this concept should be developed, and using those words patent searches should be performed in different databases. Different single sentences using synonymous words related to the main concept should be used multiple times in a database search to cover a broad area. The search should start from a broad range and then be narrowed down to the specific features of the product. An example is: If someone invented a trekking stick with a led light and an anti-shock facility. This anti-shock facility is designed for people with knee joints and ankle joint problems who want to hike in the mountain. For a prior art search, one should start with keywords such as hiking stick, trekking stick, mountain trek/hike stick, and the highest amount of result will appear there. The search should be narrowed down to hiking/trekking/mountain sticks with LED lights and finally to hiking/trekking/mountain sticks with LED lights and anti-shock facilities. The last search should provide the lowest and most specific output available in the public domain until now.
   Patent classification searching-This denotes the category related to an invention. During a prior art search, it is primarily important to identify the technology used during the invention, and this also helps to classify the product of interest.

The cooperative patent classification-joint partnership of USPTO and EPO classifies patents into eight different categories: A-H.

A. Human necessities,

B. Performing operations,

C. Chemistry and metallurgy,

D. Textile and paper,

E. Fixed construction,

F. Mechanical engineering, Lighting, heating, weapons, blasting, engines, and pumps,

G. Physics,

H. Electricity.

The electronic version of the CPC scheme is available in the USPTO search tool, where inventions are categorized according to their utility. For example, if someone invented a stainproof cloth, he/she should search for a similar invention in D. Textile and paper in the USPTO CPC scheme.

1. Patent citation search: This is also critical for prior art searches. Citation search is a patent search that legally protects inventions from infringement and provides details on how these inventions look and work based on the references they provided. Conducting a patent citation search in all databases is a time-consuming process, but before investing time and money, this sort of search helps to identify if the idea of the applicant has already been developed.

Overall, this patent search, publication search and product search at the commercial level are lengthy and time-consuming process. This was the most crucial step before starting any research on inventions. Researchers and investors should be careful about the search process; otherwise, their time and money can be lost. Patent attorneys also play an important role here to guide the researchers in relevance to patent search and other prior art search.

Conclusion-

Innovation novelty is the primary criterion for obtaining patents worldwide. Prior art search reports help researchers decide whether to proceed. Patent attorneys can guide innovators not only by searching for prior art in their research field, but also by providing suggestions depending on the search results. Legal advisors play a major role from prior art search report preparation to patent drafting and filling until their clients receive patent grants. Authorized legal attorneys can also attend the controller office as well as the high court. Thus, before proceeding to innovation, researchers should consult a patent attorney who can navigate them in the proper direction for patent applications to patent grants.