Aprior art search is an important component of any strategy to achieve maximum exploitation of intangible assets. Typically one of the first tasks performed by a patent practitioner on behalf of an inventor or IP manager, a prior art search involves the discovery of all possible literature related to an invention. The search can uncover and grant access to a whole range of relevant and valuable information contained in patents or in the public domain.
Gaining access to such information has several important benefits for inventors and IP managers: (i) it aids in accurate assessment of the viability of an invention; (ii) it helps avoid unnecessary patent prosecution and litigation, which is costly and time consuming; and (iii) it minimizes the threat of opposition proceedings. These benefits often lead to savings, allowing resources to be directed more profitably into research and development.
The key elements of a prior art search are the novelty (or patentability) search, the “freedom to operate” search and the invalidity search.
The novelty or patentability search determines if there is any pre-existing technology or patented product in the same domain and enables determination of non-obviousness. If there is a patent on the same or similar technology that would make a person skilled in the art able to work out the proposed invention, the invention would be considered obvious. This step is of fundamental importance when deciding whether or not to file a patent.
A “freedom to operate” search enables the identification of a product or a service that infringes a patent that already exists in a particular territory. Finding existing IP protection in jurisdictions targeted for the manufacture, sale, offer for sale or use of the proposed product or process is necessary for accurate risk assessment.
An invalidity search involves identifying prior art that can be used to invalidate a patent. This requires a great deal of combined technical and legal skill on the part of the practitioner. While prior art search services generally have grown in demand in the offshore outsourcing space, there has been a boom in the provision of invalidity search services in particular.
The quality of a patent search depends largely on the skill of the researcher. A skilled researcher must also incorporate a well-defined process to carry out the search methodology (using appropriate research tools), analysis and reporting of results.
A typical search process involves a number of smaller steps. A search strategy is designed, with a list of relevant keywords (and connected keywords, or “search strings”) being selected. The strategy is generally customized for every search, since the technology varies in each case. The keywords and search strings are used to undertake an exhaustive search of various patent databases and other databases. The search results are consolidated, and then interpreted and analysed by practitioners who are experts in both technology and law.
Researchers must also undertake appropriate pre-search steps and develop a full understanding of the relevant question; without this, it will be impossible to find and identify the relevant prior art. The reference steps in the prior art search include a study of technical features and of the novelty aspect, which involves an analysis of the usefulness of the invention. Researchers must become familiar with these elements.
The methodology for collecting, storing and reporting data is also important; a poor indexing and abstraction mechanism may defeat the initiatives of the researcher, no matter how well-designed and thorough the search has been.
With advancements in technology, a number of semantic tools are now available that can generate machine-driven search results, resulting in faster searches. A particular benefit of semantic tools is that they can bring various existing databases which are scattered across the internet onto a single platform. This enables quick access to content and a more efficient search. There are also artificial intelligence-based databases and tools which help cut down the search and analysis time by heuristically matching the search strings through a single platform or portal, which can facilitate access to a number of databases.
Another useful way to help determine the viability of a patent application is to undertake a patent landscaping exercise. This involves graphical representation of complex patent information, which can bring previously unnoticed or unknown factors into focus for a researcher, attorney or manager.
Patent landscaping can give insight into the activities of competitors, helping to decipher their strategies. It also enables patent practitioners to monitor research and development trends worldwide; discover the latest technological advancements in a relevant field; assess the novelty of inventions, the protectibility of an inventive step and the likelihood of infringement of patents; determine the best problem-solving approach for managing a patent; and spot potential gaps and opportunities in the market.
A precise analysis, coupled with coherent interpretation of search results and illuminated by a patent landscape map, is information that is essential to empower those who aim to commercially exploit their intangible assets to the full.
Monika Rani Gadgala is a patent engineer and leads the engineering team of the patent and analytics department at Clairvolex Knowledge Processes, a Delhi-based legal outsourcing firm.
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