Prior art searches and patents

A prior art search helps you evaluate whether an invention can be patented. Without a prior art search, you will be operating in an information vacuum and will not be able to form an educated opinion about whether you can patent your invention.

When to invest in a prior art search

The amount of effort spent in performing a prior art search should be proportional to the value of the invention and subsequent patent, if the application is pursued (prosecuted) to completion.

patent application filed for marketing purposes with no real intention of prosecuting until completion will not require much or any prior art searching. On the other hand, an invention which is the foundation of a company (for example, it is the main product or has required a large research investment) may warrant a comprehensive prior art search.

As always, it should be a company’s business goals that inform the intellectual property (IP) strategy and the specific decisions made.

Conduct your prior art search with an eye toward both the technical features of the invention and the legal aspects of patentability, such as novelty and obviousness.

Remember, a patent or patent application is not just a technical paper; it is also a legal document. Therefore, while familiarity with the technology is mandatory for a technical prior art search, a search will yield the most value if one has an understanding of IP law—specifically, patent law as it relates to validity and infringement.

Initial prior art search

The basic procedure is similar to any other type of research:

  • Form a general understanding of your invention
  • Conduct initial searches to get an overall sense of what prior art exists
  • Perform in-depth searches and review the results, and terate the entire process as required

Strictly speaking, prior art generally includes all publicly available information and knowledge that a person of ordinary skill in the art (that is, area) would possess.

Keep in mind that this is a very broad definition and an exhaustive search is practically impossible.

Search relevant patent and scientific databases

Focus on searching the relevant patent databases and scientific databases. This includes performing a standard Google search.
You might follow this process:

  1. Search Google.
  2. Search Google patents.
  3. Search the patent and patent application database of the Canadian Intellectual Property Office (CIPO).
  4. Search the patent AND patent application databases of the United States Patent and Trademark Office (USPTO).
  5. Search the PATENTSCOPE application database of the World Intellectual Property Organization (WIPO).
  6. Search the Espacenet EU patent and patent application database of the European Patent Office.
  7. Search any relevant technical or field specific publications or databases.

Prior art searches: Cautions

During a search, be aware that there are many caveats. For example:

  • Take into account that the relevant databases of many countries worldwide are not generally available in English.
  • Focus on identifying not only prior art related to the invention but also prior art that may be related to various aspects of the invention.
  • Remember that patent infringement occurs when all the aspects of a claim  are present. For example, if the claim includes features A and B, adding an extra feature C will not circumvent infringement, although it may be possible to omit an essential feature A or B to avoid infringement.

While there are many more issues to consider, having the ability to perform a basic prior art search will allow you to be more educated about the patent landscape.

Proceed with caution as the technical aspect is only a portion of the knowledge required to consider patentability and evaluate a prior art search.

Contact an IP professional for more advice.

Note: The content in this article is for purposes of general information only. It is not legal advice.