Prior art search is one of the most important elements in a patent granting procedure, wherein, we ensure that the intended invention is novel and is not published anywhere in the world before the grant of the priority date. Doing prior art search is a systematic approach that requires detailed, prudent and effective planning starting from understanding the invention, mapping the results, formulating search criteria, analyst observation, shortlisting of relevant prior arts, and delivering the report to the client.
In other words we can say is that there are plenty of things those should be kept in mind while preparing a final delivery of prior art search to the client. This article is aimed at preparing a detailed checklist while doing a prior art search that can be used to determine the quality of a search undertaken by a patent search professional. So, without much ado let’s start with “Understanding the Patent” and then we will move on to other segments like “Search Parameters” “Short Listing of Prior Arts” “Preparing the deliverable” etc.
Process 1: Understanding the Patent/Invention
Even before you get into the process of prior art search it is important to understand the intended invention or the patent in the first place. If you can’t understand the patent or invention you will not be able to find relevant prior arts and the whole attempt would be an exercise in futility. Thus it is of utmost importance to understand the detailed structure of the intended invention/patent that includes its claim(s), its legal status, and broadest claim consideration.
Here is a checklist/parameters that a patent search professional can consider while trying to understand a patent/invention.
- File wrapper analysis
- Latest claims
- Legal Status
- Interpretation of claim terms
- Litigation/re-examination analysis
- Broadest claim consideration (applicable when client has not given any claim)
Process 2: Formulating patent search strategy/Formulating search criteria
Once you have known and understood the patent/invention the next important step would be to formulate a patent search strategy that is effective, broad, and detailed. This is the only step that will determine the quality of your deliverable and thus a patent search strategy should be formulated keeping in mind the ultimate goal of the project. Below are the parameters/checklists on the basis of which an effective patent search could be formulated.
- Choice of Keywords (or spelling variations/plural-singular form
- NPL (Non-Patent Literature) Database related to the intended invention/patent
- Standards based search if required (3GPP, ITU-T etc.)
- Jurisdiction based search (if required)
- Patent search on the basis of Application Areas Of Intended Invention/Patent
- Patent search on the basis of Critical Date(s) associated with the intended invention/patent
- Assignees based search
- Inventor(s) based search
- Patent Classes based search
- Operator (s) based search
Process 3: Analysis & Short Listing Of Prior-Art doing prior art search
This is the third and one of the most important events in patent search process wherein short-listing of prior arts is done on the basis of some important criteria. For instance, search analysts may have found hundreds or thousands of results but all of them may not be relevant and thus they should be narrowed down to a small list so that they can be easily understood and comprehended.
- Short Listing Results Based On IP Laws (Publication/Filing Date Concerns)
- Exclusion Of Already Known Prior-Art/Family Members
- Prosecution/Citation analysis (File wrapper, International search report, European search report) of Shortlisted Prior-Art
- Decision On Relevancy & Categorization Of Results
- Results for each important feature of claims under focus (in case all of the features are not available in single prior-art)
- Analyzing missed-on results
Doing prior art search would be an easy one provided these are done keeping in mind these above mentioned checklists that can ensure high quality deliverables.