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.
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.
A 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.
The basic procedure is similar to any other type of research:
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.
Focus on searching the relevant patent databases and scientific databases. This includes performing a standard Google search.
You might follow this process:
During a search, be aware that there are many caveats. For example:
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.