Patent Information Basics of Prior Art Search Services

Introduction A patent is a protective right granted to a person that allows them to exclude all others from making, using, or selling their invention for a limited period. Patent protection means that the invention cannot be commercially made, used, distributed, imported, or sold by others without the patent owner’s consent.

The World Intellectual Property Organization (WIPO) defines a patent as “an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application”.

A patent can be obtained on an invention if it necessarily meets the following three conditions:

• Novelty
• Non-obviousness
• Industrial Applicability

Novelty and Non-obviousness of an invention is determined based on the prior art. The term prior art generally refers to any information that is known to the public before the effective filing date of a patent application. A prior art can prove that your invention is already well-known and not something unique. A prior art can be:

• Regional and Foreign patents and published patent applications
• Journal and magazine articles
• Books, manuals, and catalogs
• Websites, social media platforms
• Conference Proceedings
• Scientific papers
• Videos, movies and comic books.

What is a prior art search?

A prior art search involves searching various publicly available resources to figure out if an invention has been previously described by other references (i.e., prior art). If an invention has been described in any form (prior art) then a later filed application would not be granted as being anticipated by the prior art. Similarly, in the case of a patented invention, if someone discovers a prior art that anticipates the novel elements of the granted patent and has been available to the public before the effective filing date of the patent then it could invalidate the patent.

A prior art search involves searching for prior arts (patents and non-patent literature) that are nearest to the given technical invention and lie within the same domain. There are different types of prior art searches with different purposes. The businesses can choose any one of the following depending on their need:

• A Novelty or Patentability Search: This prior art search is conducted before filing a patent application. The goal of a Novelty search is to determine whether the potential invention is novel, or not. This search is conducted to ensure that the patent application will not be rejected. A novelty search can help you discover the relevant information that can constitute prior art against your invention. The findings from the Novelty search can help you decide whether to change the scope of the invention or save money by not pursuing an already patented idea.
• Invalidity/Validity Search: An invalidity/ validity search is performed after the issuance of a patent. An invalidity search is an elaborate, date-limited search of relevant prior arts after the patent has been granted. The main aim of this search is to find a prior art that the patent examiner overlooked. A patent invalidity search is generally conducted by defendants or competitors to invalidate a patent by conducting a prior art search. A validity search is performed by the plaintiff or assignee of the patent to validate the claims and to know the strength of the patent. Validity search is an essential tool to assess the patent portfolio strength of a company.
• Freedom to Operate or Clearance Search: A Freedom to Operate search is utilized to evaluate the business risks involved when launching a new product into a market. The goal of freedom to operate search is to determine whether a product or process would infringe existing patents in a given geographical location. FTO search only considers active patents and it requires an in-depth analysis of the claims and legal status of patents identified. FTO is usually done territory-wise because patent rights are territorial. For example, If the company wants to launch products in the United States, then the FTO  search will be restricted to the US only but if they want to introduce the product in the EU, FTO  should be conducted considering all countries in the EU as well.
• Patent Landscape Search:  A landscape search provides a high-level view of the technology space and is normally performed to understand the existing state of technology before venturing into it. The fundamental idea of patent landscape analysis is to review and organize the patent activity in a technology area that can reveal business, scientific and technological trends. It is done to identify patenting trends, competitors and allies, to find whitespaces or gaps in a technology and to learn the evolution of a technology or product. In a patent landscape search, a large set of patents is analyzed to extract relevant information useful for understanding a particular field. The analysis is supported with charts, graphs, tables, and patent mapping visualizations.
• State of the Art Search: A state-of-the-art search is a preliminary search that is used to comprehend the status of a new technological domain or subdomain. It is used to find out information already existing in the public domain, be it in the form of patents, scientific literature, or any existing product. State-of-the-art search is usually conducted to target the latest patents in the specific technology area. The key difference between the state of the Art Search and patent landscape search lies in the depth of details of the entire analysis. The State of the Art search is a subset of Patent landscape analysis. The patent landscape has a deeper analysis and contains graphical representations of the technology trends.
• Chemical Structure Search: This prior art search covers the identification and analysis of prior art related to structures of new chemical compounds. It is often referred to as Markush structure search. A Markush structure represents a chemical structure that defines a group of related compounds. In this search, the names and structures of chemical compounds embedded in patent texts and drawings are recognized.
• Biological Sequence Searches:  These searches are tailored for companies whose primary domain is Life sciences. Sequence searches are conducted to identify nucleotide sequences (genes, DNA, RNA, probes, primers, etc.) and amino acid sequences (peptides, proteins, enzymes, antibodies, etc.) in any prior art documents. These searches usually require specific databases such as SciFinder Chemical Abstracts Service, STN (Scientific & Technical Information Network),  SureChEMBL, WIPO Patentscope, ChemSpider and PubChem.

Significance of Prior Art Search:

A prior art search is important because it can enable someone to gain control over their intellectual property. Obtaining patent protection is a costly affair that requires both time and money. A prior art search report can help one determine the worth and patentability of a potential invention before too many resources can be put into the project. In case of granted patents, they may be forced to obtain licenses to sell their product or provide royalties to competitors, if they have not done any freedom to operate search. A prior art search service is essential to:

• Determine whether an invention is novel and non-obvious compared to the public prior art;
• Re-evaluate cost and efforts;
• Draft better and broader claims that highlight the novelty of an invention;
• Differentiate your invention from the prior arts and can be advantageous for describing advantages over relevant prior art;
• Challenge the validity of a granted patent;
• Establish the strength of the patent portfolio of a company;
• Avoid accidentally infringing on patented technologies;
• Build marketing and pricing strategies for a new product launch;
• Gain investors and shareholders confidence;
• Grasp technology trends;
• Identify competitors;
• Show you the best partners with whom you can collaborate;

Synoptic IP provides unmatched expertise in all types of prior art searches. We provide reports consisting of actionable insights in a cost-effective manner with quick turnaround times.

Read More: https://synopticip.com/pis/novelty-search-patentability-search