What are different types of prior art search?

 

Prior art searches are conducted to identify existing information that may affect the patentability of an invention. These searches aim to find relevant prior art, which includes any publicly available information that predates the filing date of a patent application. Different types of prior art searches serve various purposes in the intellectual property field. Here are some common types of prior art searches:

Patentability Search (Novelty Search):

Conducted before filing a patent application, this search aims to identify prior art relevant to the invention to determine whether the invention is novel and non-obvious. It helps inventors and applicants assess the likelihood of obtaining a patent.

Freedom-to-Operate (FTO) Search (Clearance Search):

This search is performed to assess whether a product, process, or technology may infringe on existing patents. It helps businesses and individuals identify and mitigate the risk of patent infringement before bringing a product to market.

Validity Search (Invalidity Search):

Conducted to assess the validity of an existing patent, this search aims to find prior art that was not considered during the original patent examination. The goal is to identify information that could potentially invalidate one or more claims of the patent.

State-of-the-Art Search (Technology Landscape Search):

This broad search provides an overview of the existing technology landscape within a specific field or industry. It helps researchers, investors, and businesses understand the current state of technology, identify trends, and explore potential areas for innovation.

Competitive Intelligence Search:

Similar to a state-of-the-art search, competitive intelligence searches focus on gathering information about the patents and technological developments of competitors. This type of search aids companies in making strategic business decisions.

Infringement Search:

Conducted to assess whether a product or technology may infringe on a specific existing patent. It is typically performed by parties accused of infringement to evaluate the strength of the patent and potential defenses.

Landscape Analysis:

A comprehensive analysis of the patent and non-patent literature related to a particular technology area. It provides insights into the existing knowledge base, emerging trends, and potential areas for innovation.

White Space Analysis:

Focuses on identifying gaps or areas with limited patent activity within a specific technology field. It helps innovators explore untapped areas for potential patenting opportunities.

Watch Services:

Continuous monitoring of newly granted patents and published patent applications in a specific technology area. It helps stakeholders stay updated on the latest developments and potential competitive threats.

Each type of prior art search serves a specific purpose, and the choice of the search depends on the goals and needs of the individual or organization conducting it. These searches are often performed by patent professionals, including patent attorneys or specialized search firms, to ensure thorough and accurate results.

Disclaimer: To understand the contents of the blog it assumes familiarity with Boolean logic and general searching for documents in patent databases. The views and ideas expressed above are only a personal experience of the writer of this blog. These abstract ideas may not guarantee full implementation details. Therefore, the content of this blog should be double checked by technologists and legal experts for its correctness. The writer of this blog is not liable for any loss incurred by understanding /implementing the details/content present on this blog and it cannot form any legal opinion in a court of law. The sole purpose of this blog is to make the understanding of patent related work easier in academic interest only. This Blog is written to spread awareness on Patent system of India which may help inventors to write Good quality Disclosures for their inventions. The contents of this blog are independent thought process originated in the mind of the writer which are shared here for the purpose of discussion and accumulating more clarity on patent related matters. For More information contact the author of this blog at Mob: +91-7709269318 Email: kumar.vipin1980@gmail.com

Understanding Patentability in Discrete steps | A simplified approach

Let us understand how novelty may be assessed in a more detailed way:

For Determination Novelty in a Method Claim we may check the claims in a manner described below:

(i) Suppose an inventor1 claims a method as follows

A method for saving data on a disc comprising the

steps of:

A;

B;

C;

wherein  <Interaction between steps A,B and C and portions or functionality unexplained in  steps A,B, C and limitations to claim 1.>.

 

If during search any document D1 is found having all the (equivalent)method steps i.e A, B and C than it is likely that there is no novelty in the above said claim.

 

(ii) Suppose the same inventor1 now claims the method again as follows in D2

A method of saving data on a disc comprising the steps of:

A+ a1+a2;

B;

C;

wherein< Interaction between steps A,B and C and portions or functionality unexplained in steps A,B & C >.

here a1+a2 are small incremental changes in the first step which make it different from earlier step A in Example (i).

Now as we now already know that document D1 exists but there is no document disclosing the incremental portion of step 1 i.e. A+a1+a2.  While assessment of the above said claim as a whole or in its entirety the claim is most likely be considered as novel. The reason being such a particular combination is not existing in prior art, since step 1 has changed and the elements of step 1 are most likely to interact with other steps 2 and 3 in a different manner. The interaction among the three steps is most likely to change.

 

(iii) Again the same inventor1 after few years comes up with yet another incremental invention D3 over the previous invention D2, the structure of the claim is as follows:

 

A method for saving data on a disc comprising thesteps of:

          A+ a1+a2;

          B+b1+b2+b3;

          C+c1+c2;

Wherein<Interaction between steps A,B and C and portions or functionality un explained in steps A,B & C>.

 

hereb1+b2+b3 are incremental changes in second step and c1+c2 are incremental changes in third step.

 

Now as we now already know that document D2 exists but there is nodocument disclosing the incremental portion of step 2 and 3 i.e. B+b1+b2+b3 and C+c1+c2. While examining the above said claim as a whole or in its entirety the claim is most likely to be considered as novel. The reason being such a particular combination is not existing in prior art, since step 2 and step 3 has changed and the elements of step 2 and step3 are most likely to interact with other steps in a different manner. The interaction among the three steps is most likely to change due to presence of different elements B+b1+b2+b3 and C+c1+c2.

Now assuming that there has been advancement in the technology and some other group of inventors2 have made incremental invention and published Document D4 around the same time but before D3 having a claim structure equivalent to the following:

 

A method for saving data on a disc comprising thesteps of:

          A+ a1+a2;

          B+b1+b2;

          C+c1;

wherein  <Interaction between steps A,B and C and portions or functionality unexplained in steps A,B & C >.

 

Here also the claim would be accessed on the parameter of novelty in its entirety or holistically and the same would be treated as novel.  Reason being such a particular combination is not existing in prior art. Particularly because there are additional incremental steps b3 and c2 being present in the claim filed by the inventor in D3. Therefore the claim of D3 are still novel over D4 because of the presence of additional discrete operation/incremental steps present in the invention which are still absent in D4.

(iv).Suppose the inventor1 now develops another invention D5 having structure of claim as follows:

 

A method of retrieving data from a disc comprising the steps of:

K+ k1+k2;

L;

M;

N;

wherein  <unexplained portion of steps K,L,M,N>.

Here the invention D5 is most likely to be considered novel because the context of the invention and the steps are altogether changed and there is no prior art at that particular time which is similar to the D5.

Disclaimer: To understand the contents of the blog it assumes familiarity with Boolean logic and general searching for documents in patent databases. The views and ideas expressed above are only a personal experience of the writer of this blog. These abstract ideas may not guarantee full implementation details. Therefore, the content of this blog should be double checked by technologists and legal experts for its correctness. The writer of this blog is not liable for any loss incurred by understanding /implementing the details/content present on this blog and it cannot form any legal opinion in a court of law. The sole purpose of this blog is to make the understanding of patent related work easier in academic interest only. This Blog is written to spread awareness on Patent system of India which may help inventors to write Good quality Disclosures for their inventions. The contents of this blog are independent thought process originated in the mind of the writer which are shared here for the purpose of discussion and accumulating more clarity on patent related matters. For More information contact the author of this blog at Mob: +91-7709269318 Email: kumar.vipin1980@gmail.com

Writing Patent Specification: The art which needs to be mastered by time

 - Patent Draft is a techno-legal document prepared by experienced professionals in the field of patents. The draft needs to disclose the invention in sufficient detail so that a person of average skill in the art can make the invention without any undue experimentation. For example an electronics based invention needs to be drafted in such a manner that an average person skilled in the domain of electronics can make the invention without too much experimentation. 

- A Patent draft is divided into specific parts/sections like Technical Field of the invention, Background of the Invention, Summary of the invention, Brief Description of the Drawings, Detailed Specification, Claims, Abstract, and Detailed Drawings. Specific information has to be furnished in all the above said sections.

- Technical Field of the invention: In this section information related to specific field of the invention is to be furnished. In other words the information related to the application of the invention is technical field to which it belongs is needed to be provided briefly.

- Background of the Invention: In this section Information related to prior work or prior art is provided. Here information about patent and non-patent publications which are close to the domain of the invention and description related to, how the prior art has addressed the specific problems in the industry in the form of their solutions is furnished. It also furnishes how the present invention is likely to address the same problem in the form of specific solution. The background section discusses about the problem solution approach of the specific class of the inventions and particularly highlights the new solution which is found by application of mind and R&D efforts made by inventors. The need for such solution is also discussed/provided here.

- Summary of the Invention: Summary of the invention provides information related to solution provided by the invention which is previously discussed in background section. It should be directed towards the functioning of the system and is distinct from the Abstract. It is different form the detailed description as summary provides information related to the methodology adopted in the invention and does not provide specific bits of detail as furnished in detailed description section of the patent draft.

- Brief Description of Drawings: This section provides details of the various drawings, system diagrams and flowcharts furnished by the inventors to explain the invention through various illustrations. Each Figure is briefly explained in two to three lines. Here Figures related to Prior art can also be provided.

- Detailed Description: In detailed description part of the specification information related to solution provide by way of the present invention is provided. It is to be kept in the mind that as far as possible information should belong to single invention only. The scope of the invention should be directed towards a single inventive concept. Adequate support should be built in the detailed description for the claims which is the operative part of the specification. Detailed description also covers explanation on each Figure/illustrations provided by the inventors. Too much information has to be avoided and information relevant to the invention needs to be furnished.

- Claims: Claims are the operative part of the specification. The claims should be adequately supported by the specification in other words there should be supporting description in the specification which is enabling in nature. Claims should be directed to single inventive concept and should be precise and clear. The claims should not convey ambiguity. The first and foremost requirement for a claim is that it should be novel and have inventive step. The claims should not come under the ambit of non-patentability sections of Indian Patent Act.

- Claim writing is an art i.e if the subject matter of the claims are directed towards unique interaction or solving a problem in a unique manner than such claims are said to be novel, similarly if the claims are composed of additional steps which are not present in the prior art than such claims are said to exhibit inventive step also. In other words if the claims are conveying unique meaning and there is a presence of additional steps which are absent in prior art than the subject matter of said claims are said to have novelty and inventive step both, provided the said claims are having industrial application also.

- Before finalizing the draft, a copy is provided to clients for further changes. The specification and drawings are made according to the various provisions laid down in Indian Patent office. Patent specification writing is detailed oriented work and requires clear and elaborated disclosure from inventors.

Benefits of Patent filing for Academic Institutions

Few Benefits of patent filing for Academic Institutions are as follows:

1. The name of inventors gets mentioned in patent publication which is a recognition given by government to inventors for their contribution in the development of technology where they are actively working.

2. If a patent is filed from a particular department of a engineering colleges than not only the name of inventors but also the name of the college gets recognition for their contribution in technology development.  The more the number of patents filed from a academic institutions the more it gets recognized for its elevated standard in their respective fields.

3. The Academic institution can monetize the pool of patents through licensing out the technology developed in their labs by their professors, guides and engineering students who have contributed in the making of patented technology.

4. At a bigger view the more is the intellectual capital of a academic  institution particularly patents, the more it gets recognition and the higher is the possibility of being ranked at international level.

5. It looks good in a resume of an engineering student going out for seeking job in the area of his interest.

6. Constant Patent search and analysis not only reveals the upcoming technology but also provide useful insights in where the patent data or IP is heading.

7. In one way, patent monitoring reveals the latest problems in the industry which needs to be solved. If the solutions are created and implemented,  the same can be a subject matter for patenting in the name of the academic institution.

8. Today 80 percent of technical knowledge exist in patent documents worldwide. This information is very huge and effective retrieval of information for R&D work plays key role in developing strategies to solve the problems existing in the industry at the time where alternative solutions are needed.

9. Patentability assessments prevents duplication of R&D and helps in tech transfer from nearest geographies where the development has already completed.

Disclaimer: The content of the blog are independent views of the author. The  information provided here is for the purpose of spreading IPR awareness among the academic institutions of the country. The contents of this blog are written out of academic interest only and should be checked thoroughly by relevant experts for its utilization under any institution.