Prior Art Search - An Overview

It is focused to provide basic knowledge on prior art search for new intellectuals in the field of IPR. It includes Basic knowledge of Prior art, File wrapper analysis, not list preparation, and one of the important law of Prior Art.

1. By Manoj Prajapati Prior Art Search An Overview

2. Content Prior Art Search ? # Importance # Types # Prior art search- What, When, Why, Which & How # Benefits File Wrapper Analysis ISR & SISR 102 a, b & e Laws of Prior arts Not list preparation.

3. What is Prior Art ? PRIOR + ART Existing or Earlier or Previous Knowledge or Information

4. Prior art is… Any evidence that your invention is already known, # Many inventions does not become product, because of there evidence somewhere Physical or commercial availability is not must. Prehistoric cave painting Centuries old technology An idea that can’t possibly work an existing product Competing art, these are ideas that may not be at all like your invention but do the same job. So it is important to study competing art for two reasons: # Most invention are a solution to a problem, and most problems have more than one possible solution. So examination of all other solution is needed, as some may offer more advantages than yours # If you try to exploit your idea commercially, alternative solutions may be strong competition. In order to argue successively that your solution is better than alternatives, you need to know what the alternatives are ?

5. Prior Art Search - Importance - Recommended while drafting a patent specification; - Legal status : with regard to grant of a patent, whether lapsed or not; - Assignee search : ownership of patents; - Patent family; - Assess Infringement in order to avoid or challenge; - Market monitoring; - In-Licensing / Out-licensing; - Patent Validity; - Avoid litigation Impact - Improved patent application - Understanding work of other researchers - Competitive information - Learning about your field of researches

6. What to Search ? Title – may or may not be enough indicative Abstract – look for key terms, may or may not be much indicative Description – careful analysis of disclosure Drawings - Idea about elements of invention Claims – covers novel features, significant for infringement, FTO and validity analysis Prior art search process involves, patent search as well as product search. In order to be confident one need to do both much thoroughly.

7. Warnings/Precaution It may take only minutes on the internet to find prior art. If you do not look for it, companies and investors almost certainly will do. You are unlikely to get help or funding if they find crucial prior art that you missed. Do not ignore any evidence you do not like. The purpose of a prior art search is to go looking for evidence you may not like. An absence of prior art at the time of your searches may not be a permanent absence. You should update our prior art searches periodically as you develop your idea. No prior art search, not even an official Patent Office Examination is regarded in law as a conclusive proof of novelty.

8. Type of Prior art search Patentability Search Validity Search Invalidity Search Freedom to operate Search Infringement Search etc.

9. Searching Databases– Patent/ Non-Patent Search Publicly available Patent Databases : WIPO Patentscope EPO or Espacenet InPASS USPTO public pair USPTO text advance search UKIPO Google Patent CIPO PAJ KIPO Subscription Based Databases: Questel Derwent world patent index STN SciFInder Thomson Reuters Innovation analyst Chemical Abstract Service Reaxys

10. Non-Patent literature Search Google Scholar PubMed Google search Science Direct IEEE Xplore ACM Digital Library CITE SEER PubChem SureChEMBL ChemSpider

11. Prior Art Search – Search Strategy 1. Finding the right keywords To maximize chances of finding relevant information, include keywords which best describes your idea(Synonyms, technical terms). 2. Product Searching That is similar to your invention/idea (prior art) That tackles the same problem (competing art) Obsolete technologies Products under development You can search offline Discuss to peoples . with experience

12. 3. Patent Searching This will be far more important than product searching. Patent searching involves: Finding every patent document that is relevant to your invention Interpreting the significance of your patent search findings

13. Benefits Conducting Prior search Avoids submitting patent applications with claims that are not patentable and will be easily rejected Determines whether your invention is novel compared to public prior art Develops a strong patent claim strategy before you file your patent application (and reduce the chance of extensive amendments) Account for close prior art when drafting your patent application. For example, you might want to describe advantages or improvements over relevant prior art, as this can help persuade the patent office that your invention is “non-obvious” Understand how your idea fits into the technological field Be better prepared to discuss your invention with a patent attorney and explain what aspects of your work might be patentable

14. # Patentability Validity/Invalidity FTO Search Subject Invention Disclosure Subject Patent Product Disclosure/ Service Patent Search Yes Yes Yes Search Scope Full Text Full Text Claims Legal Status No No Active/Pending Non-Patent Search Yes Yes No Jurisdiction Range No No Yes Date Restriction No (Generally) No Yes Quick Overview

15. File Wrapper Analysis

16. Patent Appeal Sometimes, an appeal is your only reasonable option in a patent application that has been repeatedly rejected. The right time for an appeal may be when you’ve exhausted all other easier options and have tried to compromise as much as possible with a particular patent examiner.  Ex parte  patent appeals are decided by the Patent Trial and Appeal Board (PTAB or Board) of the USPTO. Refer the link for details: http://www.patenttrademarkblog.com/patent-appeal-cost-process-final-rejection/

17. International Search Report

18. International Search Authority (ISA) A center of patent office, which tend to act as Invention Search Authority for the International application filed. A person having sufficient educational qualification is appointed as ISA by PCT There are more than 10 ISA worldwide ISA looks after the search copy received from patent office, for its examination Search is conducted to look any relevant prior art that is already out. Go through Patent documents, Journals, Non-technical Journal etc.

19. ISA, examines the received application for its claimed invention , whether it contains one claim or more. In case of huge no. of claims they may ask for the additional fee. The application is scanned for the uniformity ( i.e. One invention or more, Uniformity mean document contains only one invention), in case lack of uniformity applicant need to pay additional charges for conducting searches Further, title and abstract of the application is analyzed to know whether they are in compliance with PCT requirement, concise and meaningful. Lack of compliance, mean applicant needed to redraft invention along with rectifying mistakes if any At the end ISA establishes a search report ( i.e. International Search Report) along with a written opinion of ISA

20. ISR; form PCT/IB/337 & 338 A report established by the ISA containing citations of documents (prior art) considered to be relevant for determining, in particular, the novelty and inventive step of the invention as claimed. The ISR also includes the classification of the subject matter of the invention and an indication of the fields searched as well as any electronic databases searched. Search based on claims as originally filed. Search performed according to PCT Examination Guidelines The result of the international search are recorded in the International Search Report. The Search Report is published by the International Bureau.

21. Supplementary International Search Report

22. A optional procedure under PCT, generally requested by PCT users, applicants, agents, or whoever wanted to have a second international search done during the international phase of PCT procedure. Reason: Sometimes a problem faced that they received a report from ISA, and it looked as everything is okay, but later on when they enters the national phase of this particular international application, all the sudden at that stage the national designated office came up with a new prior art document which had not been discovered during the international phase nevertheless, is extremely relevant to the client invention. So, In order to prevent such cases, they have asked to introduce a procedure to have a second authority to also done international search on the same international application.

23. Supplementary ISR PCT/IB 375 A report, similar to the ISR, established during the supplementary international search. Supplementary international search permits the applicant to request, in addition to the main international search, one or more supplementary international searches each to be carried out by an International Authority other than the ISA that carries out the main international search. The SIS primarily focuses on the patent documentation in the language in which the SISA specializes.

24. Addresses applicants’ concerns about additional prior art not found by ISA, e.g. because of linguistic diversity, Translated into English if necessary Search of supplementary subject matter not covered by ISR Established by alternative authority, currently offered only by AT, EP, FI, RU, SE and XN (applicant has free choice) No written opinion Not published but made available to public (file inspection)

25. Laws of Prior art 35 USC § 102 a, b, e

26. 35 U.S.C. 102 CONDITIONS FOR PATENTABILITY; NOVELTY A person shall be entitled to a patent unless – the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or the claimed invention was described in a patent issued under section 151 , or in an application for patent published or deemed published under section 122(b) , in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 35 U.S.C. 102 (a); Novelty

27. 35 U.S.C. 151   Issue of patent IN GENERAL.—If it appears that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within 3 months thereafter. EFFECT OF PAYMENT.—Upon payment of this sum the patent may issue, but if payment is not timely made, the application shall be regarded as abandoned.

28. 35 U.S.C. 122b ; Publication (b) Publication (1) In general— (A) Each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period. (B) No information concerning published patent applications shall be made available to the public except as the Director determines. (C) Not withstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and non-reviewable.

29. A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— A. the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or B. the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. 102 (b);

30. 35 U.S.C. 102 (e); A person shall be entitled to a patent unless- (e) the invention was described in- - an application for patent, published under  section 122(b) , by another filed in the United States before the invention by the applicant for patent or - a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in  section 351(a)  shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under  Article 21(2)  of such treaty in the English language.

31. Not List Preparation

32. It is an essential document prepared prior to start Validity or Invalidity searches in order to short out the relevant patent references of subject patents There are many ways of preparing Not List; some of these includes using Espacenet , Questel Orbit or using Family- izer Below are the examples of Espacent and Family- izer ; 1 . While using Espacenet to prepare Not List, Either of the below mentioned pathway can be utilized, i.e. short out cited documents of subject patent then find out family members of cited patent reference or vice-versa

33. 1. Follow the steps to prepare not list using Espacenet Google Patent Espacenet Extract out these publication numbers in an Excel sheet and repeat the same in order to access INPADOC family members

34. 2. Follow these steps to prepare not list using Family- izer Take these patents to be included in the Not List Drawback: It does not show results sometimes

35. In case any query; contact Email: [email protected] “Raising Intellectuals”