A NOTE ON “PRIOR ART” SEARCHES

Searches can have one of several objectives. (It is generally not a good idea to mix objectives when doing a search – as I hope will become clear from the discussion below.)

Search for Novelty of an Invention

If you are searching to establish whether an invention is novel, you want to know if it has been patented or published before in the same form as you wish to patent. This is the search for the class of prior art that renders your invention not novel enough to receive a patent on. Note that as we will be looking at all publications and not just patents, we are concerned with the entire disclosure of patents, not just the claims. We are also concerned with foreign as well as domestic references.

There is another class of prior art that may render your invention “obvious” and also prevent you obtaining a patent. There are guidelines in the Manual of Patent Examining Procedure and in case law around what makes a piece of art relevant to either novelty or obviousness. We will be looking for both classes of prior art as we proceed with the search.

Some of the art that you find in this search will likely end up in the disclosure of your patent application, and your search needs to be broad – and certainly broad enough that you cover anywhere that an examiner might look. Although there can be some very obscure references, it is likely that the inventor is the best source of relevant art, and unlikely that we will be surprised by the examiner.

The basic service provided by many search services will provide you with only a list of patents based on search criteria taken from your invention and discussions with the inventor. My preference is to give you also an analysis of the art also – basically a first draft of what the “background” section will look like in the final application. (As your patent practitioner I would have to do that in any case to be able to draft the patent application. This process just gets us there a little earlier – and I think gives you more value for your initial expenditure.)

Right to Practice Search

This type of search is focused on a product that you might want to sell, and asks whether somebody already owns it. We define the product exactly, and then search the relevant patent database (U.S. patents for a product that you want to sell in the U.S.). Note that in this type of search we a looking at claims, as that is what we would be infringing if we found a problem.

There are a couple of caveats to this type of search, which I will bullet point here.

· A search for a chemical can yield not only “compound” patents, in which the chemical structure itself is claimed, but also compositions that contain the chemical. It is common practice, for example, with polymer stabilizers, to claim the means by which the polymer is processed, and limit the claims to use of a compound that contains the stabilizer that is the subject of the search.

· Establishing if a patent will be infringed may involve some interpretation of the relevant art. It is clear if a patent will be infringed exactly – your intended commercial product falls exactly within the scope of the claims of somebody’s patent. There is a legal “doctrine of equivalents” that says that if you are close enough in certain regards to somebody’s claims, you may also have a problem. This situation has to be examined on a case by case basis in light of case law.

I can do right to practice searches for you in the U.S.

General Searches

An objective for this type of search may be to establish what your competitors are working on and where in the overall field you might have opportunities.

This search might be application based, and ask questions around how a particular problem is being solved. The structure of the search and final report will depend on the specific application. In some ways, this type of search is a combination of the first two, only a little more open ended.

As I develop a database of public searches of this general type, I will publish them on this site.