State of Art Search Analysis
INTRODUCTION
The uniqueness and novelty of a product or procedure makes it patentable, there might be an end number of queries that may make a person wonder if his work is unique and novel. It is crucial that the work significantly differs from previously known practices and inventions, these inventions or inventive steps should not be the one which could be extracted from the prior publications and inventions. A whole bunch of literature is available to navigate the novelty, the approval for grant of a patent is a hectic procedure there are different stages of documentation, search and examination and a patent is only granted if the application qualifies all these stages, it takes years to get a patent application approved based on requirements and criterias. All the information which helps to unravel the novelty of an invention is available in the public domain. This accessible information is used meticulously to search for any prior publications and patents which are already granted.
The basic criteria to grant any patent is novelty, non obviousness, inventive step and industrial application, furthermore no patent can be granted if it falls under any criteria mentioned in section 3 and 4 of the Patent Act.
This article intends to focus on Prior Art Search or State of Prior Art which is one of the preconditions to determine the patentability of an invention. For the purpose of understanding Prior Art Search let us first understand Patentability search
Patentability search
A patentability search is an essential step when a person is intending to apply for a patent further it is also a crucial step during the patent examination procedure which is conducted by patent office. It ensures that the invention which seeks patent fulfills the basic patentability criterias. Furthermore it should not contradict any provisions of the Patent Act.
Patentability search is a broader concept than just checking for a novelty search, it is an extensive mechanism conducted to ensure that all the requirements of a patent are met; it includes ensuring novelty, non-obviousness and other patentability criterias like industrial applicability and it ensures that it does not fall under the explicitly disallowed criteria of section 3 and 4 of Patent Act. Prior art search or novelty search is a part of patentability search. Patentability is determined based on many factors which might influence the grant of a patent.[1]
The patentability search can be a very laborious task because the literature to verify that no prior art exists can exist in different languages around the world.
Legality of a patent comes into play when patentability is considered. Any patent should not contradict essentials of a patent provided by the Patent Act, 1970, no invention is patentable if it attracts any criteria mentioned under section 3 and 4 of the act. For instance no invention in atomic energy can be granted a patent, no patent can be granted for a method of horticulture or agriculture.[2]
Though there is no legal compulsion for an applicant to do a patentability search but it is usually practiced if the applicant aims to obtain a patent, it is desirable to take note of already available prior art and other patentability criteria if one wishes to get a patent. However, after the application stage the patent examiners undertake heavy examination to verify documentation and patentability requirements therefore, if an application indicates that it does qualify the patentability criteria then it is rejected.
PRIOR ART OF SEARCHING ALSO REFERRED AS STATE OF THE ART SEARCH
Under patentability search the most important part is novelty search which is also known as prior art search.
The two features that are necessary to the validity of a patent are novelty and utility, but the real test is the novelty of the invention. Novelty is quite essential, for otherwise there would be no benefit given to the public and consequently no consideration moving from the patentee while interpreting the factor related to public knowledge and public use.” –Lallubhai Chakubhai Jariwala v. Chimanlal Chunilal and Co.[3]
While conducting a novelty search all prior arts are thoroughly looked for to navigate the originality of an invention. Searching for prior art essentially takes place before developing a mechanism in the process of research and development to identify if the kind of art an individual is about to conceive already exists or not.
State of art search also helps to strategize the idea, researching on a project gives the inventor an idea about the previous inventions and enlightens him to determine what kind of innovation is required in the previous projects to bring improvement. State of art search is a terminology used to decipher the information available which is relevant to determine the originality of a patent claim.
A vast database which makes the claim of novelty predictable is available in public domain; it includes other patents, articles, scholarly publications, presentations at conferences, prototypes, and other literature that discloses information.
This available information serves the purpose of determining the patentability and claims of originality.
When is prior art search conducted?
The purpose of prior art search as discussed above is to determine novelty, it is to identify if any similar art exists. Therefore, prior art search is conducted during the research and development stage of an invention. It may be discovered that significantly similar works are available in the public domain.
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The search for a patent begins during the development of the invention and continues till the date of application for grant of patent. It is also performed during the examination stage after the application is filed, the patent officials undertake an extensive research to ensure that the invention for which the patent is claimed is free of duplication. The very fundamental quality of novelty is checked for while examining the application of patents. However, during this examination stage the applicant is given an opportunity to clarify and present arguments to prove the originality of the invention.
The search of prior art is not only performed by the applicant but also by patent authorities to determine the novelty. A patent application is compared to the prior art and previously granted patents.
This process of search and examination determines whether a patent should be granted or rejected. Novelty is one of the key aspects that determines patentability. An inventor should conduct a research on prior art or state of art to determine the probability of success of a patent application.
WHAT IS THE NEED OF PRIOR ART?
Prior art search constitutes studying of a comprehensive body of knowledge encapsulating all published scientific and technical information available. This expansive resource is particularly rich in insights into cutting-edge technologies, it offers a detailed and specific understanding of various technological aspects. What sets prior art apart is its structured presentation, often adhering to WIPO standards, which provides a uniform and organized framework for the information.[4]
Prior art search also helps make technological investigation for researchers. It helps to further efficient access to information for development purposes. It helps to foster development and research by providing a vast knowledge pool available in the public domain.Prior search helps to address intricacies and facilitates problem solving by addressing challenges in the field of science and technology.
Prior art search essentially helps in accessing vast data pools of scientific repositories which helps in research and development of any technique. Conducting a prior art search helps to fill the gap and make improvements to existing technologies and techniques.[5] As discussed above the crucial part of research and development is to find if any prior technology exists. It is very helpful in research work to give answers to the research objectives, it also helps to develop ideas and helps technical understanding.
Examination of prior art by the patent office helps to avoid duplicacy and helps to maintain an original character of invention.Novelty is the key feature of patents. Any kind of copied art is undesirable. A patent can never be granted for a copied invention?
The projects that may have limited novelty or viability can be avoided to invest in and could help to save unnecessary expenses on research of such already known ideas. By understanding the area of investment it helps to avoid investing in unnecessary inventory methods.
SOURCES OF PRIOR ART
The sources for search of a prior art may include any publication, patents, marketing brochures, products, devices, equipment, process and other materials.
Some specific sources for search suggested by WIPO-
Major Sources of Prior Art Information
The major source of patent search are the National and International patent office, these offices have documents and publications which helps to conduct a search for patents in order to identify any prior art. These are primary organizations responsible for managing and disseminating patent-related information. WIPO provides a directory list of Intellectual property offices around the world
Examples of national and international publication offices are IPO Publication (Indian Patent Office Publications), EPO Publication (European Patent Office) which can be assessed through Esp@cenet (60 million documents from 60 countries); JPO Publication (Japan Patent Office), relevant resources are JPO IPDL, F-Term.[6]; USPTO Publication (United States Patent and Trademark Office),key platforms areUSPTO IPDL, Cassis[7]; WIPO PCT Publication (World Intellectual Property Organization – Patent Cooperation Treaty), prominent sources are PatentScope, IPC (International Patent Classification).[8]
Other Important Prior Art Databases
Free-of-Charge Patent Information- Platforms providing patent information without charge.there are various platforms which can be assessed to gather information about technology and inventions, there are end number of online sources like journals which may provide information.
IPDL of IP Offices – Intellectual Property Digital Library platforms managed by various IP offices one of these libraries is also managed by WIPO.[9]
Commercial Patent Information- Commercial databases offering comprehensive patent-related information. Examples- Thomson-Derwent, IBM, PatentCafe, MicroPatent, Questel-Orbit, Patlis, WIPS, etc.[10] These commercial database may be assessed for gathering patent related information.
Google IP – Google’s platform for accessing intellectual property-related information.[11] Google offers a digital library to assess the non- patent literature to facilitate patentability search.
Scientific, Chemical (Chemical Abstract)-Databases focusing on scientific and chemical literature, with Chemical Abstract specifically relevant to chemistry, allowing searches for chemical compounds and structures.[12] example, CAS STNext which specializes in providing details of pharmaceutical and Chemical patent search.
In summary, these sources and dissemination channels form a diverse landscape for accessing prior art, ranging from major patent offices and international organizations to specialized databases and literature repositories. Researchers leverage these platforms to conduct thorough prior art searches for their studies, innovation, and patent-related activities.
DIFFERENT APPROACHES TO SEARCH OF PRIOR ART
PATENT ANALYTICS
Patent analytics is the approach which uses patent information to detect innovation patterns in any area. This approach of patent analysis uses a data driven mechanism and evidence of innovation, research and development process.[13]
Patent analytics provides evidence based information, which is rich in data, this analysis helps in research and development of a patent for the applicant of the patent and examiners of the application. This data driven mechanism helps to avoid any infringement of patent. Numerous resources are available to analyze the patent information scientifically. Even non patent literature is used to understand the patentability grounds. An extensive process of research and analysis is conducted to find the patentability of a claim.
Patent Searching
A patent search is conducted to identify the already granted applications and applications which are already published, this is a source of prior art search. It helps the applicant to avoid any infringement of patent rights granted to others, it also helps the examiners of patents to verify that no infringement is caused while granting patent to a new claim. A patent researcher does a patent research to find out if the new invention is in any way causing infringement to an already existing patent. There are certain online platforms which present a patent report to your claim by searching for patents; this is an effective way of looking for prior art. There are different ways to identify prior art by way of patent search. Some of these strategies are mentioned below.
Knockout Search
A Knock Out Novelty Search is a swift prior art inquiry, providing 2 to 4 potential prior arts. During a knockout search all patent and non patent databases are assessed to ascertain the patentability of the invention. The purpose of knockout search is to swiftly pinpoint the closest references that directly align with the invention, covering all its elements in the broadest interpretation. Conducting this search in advance can be a time and cost-saving measure, preventing the investment of resources in pursuing an idea assumed to be novel. A knock out search also helps to avoid the expenditure on preparing and filing a patent application when a simpler approach exists to identify potential roadblocks posed by existing prior art.[14]
Finding the right keywords
The most basic approach is to search for keywords. However, there may be an end number of search results; many of these could be irrelevant, it requires extensive research. There may be some technical terms that might help to determine whether any prior art or any other publication which might be a barrier to invention can be discovered. Multiple databases are available online to perform a keyword or text based search. One may conduct a thorough search to find the prior art by using platforms and sources of prior art as suggested above.
One can address certain questions to find keywords for instance what are the materials used in the invention, what is the purpose etc.
- Broad to narrow searching method- Many researchers follow this strategy, it is one of the foundation building techniques, a researcher begins to identify the prior art by looking for main concepts and then gradually moves towards selecting primary concepts. This helps to filter search with time. This approach is required to find out the characteristics and features of an invention.
Classification based search
Classification and sub-classification- It is suggested to conduct a classification based on keywords, this can be done by using online web search. It is a hierarchical category to organize things on codes based on their characteristics and relationships.[15] Each of these general categories has a code representing a specific invention.[16] Start with obvious keywords but gradually narrow down the search mechanism to have more precise words. There are many platforms like European Classification (ECLA) International Patent Classification (IPC).[17]
CPC- Cooperative Patent Classification- This is a platform by USPTO designed with EPO to conduct classified searches. This online platform has a huge database which helps to conduct a search working on classified methods. It has 8 areas like Human necessity, Chemistry and Metallurgy, Textiles and papers etc.[18] This platform helps to determine the appropriate classification for the invention.
Citation based search
Patent citations are like academic citations, these are references added to a document. It helps to reflect upon the previous works, this is one of the most important sources of patent search.
There are two types of citations: backward citations and forward citations. Backward citations are the one in which references are cited in the root document whereas forward citations use the root document as a reference in further publications.[19]
These backward references can be found in the root document as references cited. The forward citations appear on online platforms for instance EPO database is available for both forward and backward references.
Assignee and inventor based search
Assignee and inventor based search gives access to database for all patent documents, thus might help to find the patents that might be infringed by your claims of patent. To extract more information one can perform Assignee based and inventor based research. By using above mentioned search techniques it is required to form a list of assignees or applicants, use these names on the database to find similar inventions. [20]
For inventor based search create a list of names of inventors you come across while researching on a database.
If some new information is gathered by using this technique new searches based on extracted information can be performed to broaden the search. There are online libraries like Espacenet, UMassAmherst, USPTO which gives access to patents based on assignee and inventor search.
Product searching
It is necessary to find out the products that exist in the market. It is possible that the product one is looking forward to working upon already exists in the market; however, it could be possible to make significant improvements in the existing product to increase its industrial efficiency and claim patent.
Not just recent products but a historical check is required to draw insights from the existing products.
There might be certain products which are not patented or no patent claim is made for such products. No claim of patent can be made if there exists a product which is available in any market because this product is available in public domain and it does not constitute a new invention. However, these products can be researched upon to identify the needed research and development in the product to come up with a groundbreaking invention.
Author: Komalpreet Kaur, in case of any queries please contact/write back to us via email to [email protected] or at IIPRD.
[1] https://www.intepat.com/blog/difference-between-prior-art-search-and-patentability-search/
[2] https://depenning.com/blog/section-3-of-indian-patent-act/
[3]https://www.mondaq.com/india/patent/1216710/patentability-search
[4] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cm_09/wipo_ip_cm_09_topic7_01.pdf
[5] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cm_09/wipo_ip_cm_09_topic7_01.pdf,
[6] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cm_09/wipo_ip_cm_09_topic7_01.pdf
[7] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cm_09/wipo_ip_cm_09_topic7_01.pdf
[8] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cm_09/wipo_ip_cm_09_topic7_01.pdf
[9] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cm_09/wipo_ip_cm_09_topic7_01.pdf
[10] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cm_09/wipo_ip_cm_09_topic7_01.pdf
[11] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cm_09/wipo_ip_cm_09_topic7_01.pdf
[12] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_cm_09/wipo_ip_cm_09_topic7_01.pdf
[13] https://en.wikipedia.org/wiki/Patent_analysis
[14] https://dunnerlaw.com/the-importance-of-tm-clearance-searching/
[15] https://www.uspto.gov/sites/default/files/documents/Basics-of-Prior-Art-Searching.pdf
[16] https://dynomapper.com/blog/46-business/479-how-to-conduct-a-patent-search
[17] https://www.mondaq.com/india/patent/1216710/patentability-search
[18] https://www.uspto.gov/sites/default/files/documents/Basics-of-Prior-Art-Searching.pdf
[19]https://www.invntree.com/blogs/using-patent-citations-as-an-effective-tool-while-conducting-prior-art-search
[20] https://guides.library.umass.edu/c.php?g=1314110&p=9670972