It is essential to be aware of prior art during the patent application process and how this may impact your application. Typically, prior art is discovered during a search conducted by an examiner at the patent office.
Prior art refers to any information that was publicly disclosed and widely known before a patent application was filed. This includes published patents, applications for patents, as well as scientific and technical books and journals.
What is Prior Art?
Prior art is a term used in patent law to refer to any information that is publicly or generally known about an invention before filing for patent protection. It can be an important factor when determining whether your invention is new and non-obvious.
In the United States, a patent is only valid if it meets both novelty and non-obviousness criteria. As it’s easy to get a patent without fulfilling these requirements, making sure your invention has met these criteria before filing its patent application is essential for securing protection.
Prior art can have an impact on your patent application. One common type is a patent issued before filing your application – this can be useful as it indicates the technology has already been around for some time and thus unlikely to be considered “new” or “non-obvious.”
Another type of prior art is a publication published before you filed your application. This can help determine whether your invention is novel or not since it shows other people have been working on this technology long before you did.
In the United States, prior art is defined by 35 US Code section 102 as amended by the America Invents Act. Under this statute, prior art refers to any written description or patent application from any country that is publicly available more than a year before filing for patent protection in the United States.
These amendments are essential, as they help you avoid having your invention deemed invalid due to a lack of prior art. Furthermore, they clear up any potential ownership disputes and enable you to apply for a patent without worrying about someone else’s rights in regard to your creation.
Prior art can take many forms, but the most prevalent examples include patents, publications and knowledge that is widely known or accessible to those knowledgeable about a field. This category of prior art is quite expansive and encompasses everything from cave paintings to centuries-old technology.
What is a Patent Search?
A patent search is a type of research used by inventors and entrepreneurs to confirm that their invention is original. It involves searching patent databases for similar inventions before an inventor invests time and thousands of dollars applying for a patent.
The United States Patent and Trademark Office (USPTO) will reject a patent application if there is already an existing valid patent for the same invention. As such, many entrepreneurs and inventors conduct patent searches before filing their applications.
Inventors have two options for conducting this search: they can do it themselves or hire a professional with extensive experience filtering through hundreds, if not thousands, of documents to identify the most pertinent ones. In most cases, searches will be handled by an experienced patent attorney with expertise in the relevant field.
Before beginning a patent search, an inventor must understand what prior art is and how it affects the application process. This knowledge can assist an inventor in determining if their invention is novel and original as well as how it might fit into the field in which it’s being invented.
When conducting a patent search, it is essential to take into account the classification system utilized by the USPTO. These classifications are created to match inventions in their database with the most pertinent patents available.
It is essential to note that the USPTO categorizes patents into approximately 450 classes and 1,000 subclasses. This makes it challenging for inventors to locate all pertinent class/subclass combinations they may be searching for.
Additionally, an inventor may miss some of the most pertinent references by searching for keywords not present in a document. This can occur if they lack experience using the patent classification system or don’t know what to look for when searching.
Inventors should strive to avoid the mistakes novice searchers make and improve their skills by reading books or watching videos related to patent searching. Furthermore, inventors should invest the time in learning how to utilize classifications effectively in retrieving relevant patents.
What is a Patent Search Report?
A patent search is an essential step to take when applying for a patent. It should not be overlooked, as it helps you save money on the application process and determines whether your invention is novel and non-obvious. Additionally, this step helps determine if you need further technical support with your invention.
Searches can be conducted for free using public databases, commercial information brokers, or patent search agents. For more detailed results, paid database products are available for purchase.
Many patent applications are filed in rapidly developing technology areas, such as smartphones, web apps, and automobiles. As a result, the product features that the patent protects may already have become outdated by the time it grants (2 to 3 years from filing).
If your company creates software for smartphones or web apps, it is not worth spending time and money searching for patents as most of the technologies being patented will have become outdated by the time they grant. Instead, focus on developing other types of intellectual property rights to support your business objectives and growth.
When a company creates new technology, it may need to invest significant resources in researching potential competitors. This can be an expensive and time-consuming exercise.
However, by performing a patent search, an inventor can gain insight into what competitors are up to in their industry. Doing so gives them an edge and allows them to design around potential threats.
When conducting a patent search, keywords are employed to locate relevant patents and other publications. These words can then be classified into different categories to make it simpler for researchers to focus their findings. Afterwards, this search is compared with a cooperative patent classification system which groups patents according to invention type.
Once the search is complete, an evaluation of the results is conducted to see if a patent can be granted based on what the prior art shows. If your invention reveals something non-obvious or novel, then chances are good that you’ll be successful in securing a patent.
The search report can be an invaluable asset in anticipating certain objections that the regional patent office might raise against your patent application. By recognizing these obstacles, you can craft responses that make the examiner more likely to grant approval of your application.
What is a Patent Examination Report?
A patent examination report is a document that details any objections or questions an examiner has raised about your patent application. These concerns could range from technical to formal and could involve questions such as whether the invention in question is novel and inventive, or if it meets patent eligibility criteria.
Once an applicant receives a patent examination report, they have time to respond within the specified deadline. If the examiner is not satisfied with the response, they may issue another examination report or issue a hearing notice to settle the dispute.
When crafting your patent examination report response, it is essential to comprehend how each section of the report affects your application. Doing this will guarantee that any objections raised by the patent examiner in their report can be successfully overcome.
The initial examination report issued by the patent office will typically contain rejections based on various aspects of your patent, such as prior art, obviousness, and patent eligibility. To address these rejections, you may need to submit claim amendments or arguments in order to address them.
Many patent applicants find the process of filing a patent application quite tedious, often necessitating several rounds of correspondence with the patent examiner before all objections have been addressed and your patent application granted. This can be an incredibly frustrating experience for many applicants.
When crafting your patent examination report response, it may be beneficial to take into account any applicable guidelines or rules your country has implemented on how to handle certain types of claims in patent applications – such as secondary pharmaceutical claims made with Markush formulae. Such guidelines or rules could provide a more thorough examination of such claims and also help avoid patent evergreening which can restrict access to medicines in developing countries and negatively affect people’s quality of life globally.
When it comes to patent offices in developing countries, there are both opportunities and challenges. Collaborating with other patent offices is one way of addressing these obstacles; arrangements like exchanging examiners, accessing search and examination products of other offices, as well as sharing results from pre-grant opposition proceedings or post-grant revocation or grant of any compulsory license on a patent can all be beneficial.