prior art search

PRIOR ART SEARCH

You must do a prior art search before embarking on any patent application. The prior art search checks that your invention is really novel. What counts as “prior art” is actually a quite complex legal concept, but for the sake of simplicity we will just say that it includes any publication that was published prior to you inventing your invention.

What you are looking for is any complete disclosure of your invention, anywhere in any document, including on the internet. If you find such a publication, then you should probably not file a patent application. Remember, as the inventor, you get a one-year grace period in the US between disclosing your own invention and filing your patent application. But if someone else has disclosed it, you do not get a grace period and you cannot file a patent application The one-year grace period is only for your own publication! Professional prior art searches can cost many thousands of dollars – we assume you wish to avoid that. So we will show you how to do a simple search.

The simplest way to do a prior art search is in three stages:

(i) Search the internet using a search engine such as Google® or DuckDuckGo.

(ii) Search using the US Patent & Trademark Office (USPTO) database.

(iii) Do an international patent search using the World Intellectual Property Organization (WIPO) search engine or the European Intellectual Patent Office search engine (links given below).

Step 1 – Internet searching using Google or a similar search engine is very easy. The main thing is to spend as much time as you can using every alternative combination of words you can think of. For example, if you have invented a new can for tinned food container that you open with a zipper system, then you should combine words and phrases such as “can” “canned” “canned goods” “canned food” “tin can” “food tin” “container” “containment” “zip” “zipper” “fastener” “seal” “sealing” “reseal” “resealable” etc. The more combinations, the better.

Step 2 – Using the USPTO search engine is also easy, simply do the following.
– Go to http://patft.uspto.gov/ (or start at the main page www.uspto.gov and look for patent searching).
– You will see two search options – one for Patents and one for Applications. They may be called “USPTO Patent Full-Text and Image Database (PatFT)” and “USPTO Patent Application Full-Text and Image Database (AppFT)”. Obviously one of these searches is for issued patents and one of them is for published patent applications that have not yet issued as patents. Both count equally as prior art, so you must do both searches.

– Select a search option and select “Quick Search”. The page you will see will look like this.

(a) Fill in the Term 1 and Term 2

(b) Select the corresponding fields (e.g., All Fields, Title, Abstract, Claims etc.)

(c) Select the connecting operator (AND, OR, AND NOT).

(d) Click the Search button

The best way to learn how to use this is to try it out, so go ahead, do it now. Just think of an invention and start searching. It really is easy.

There is a very useful ‘Help’ section. Just click on the Query [Help] button that will walk you through the process, step-by-step.

One of the most useful features to know about is the truncation feature that lets you search for any word beginning with a certain string of letters. For example if you type in zip$, you will retrieve any words starting with zip, e.g., zip, zipper, zipped, zipping, and zip-fastener.

You can put any two search terms into the two left hand “Term” boxes and match them up with the right hand “Field” boxes. The “Fields” box uses a pull-down menu which contains a lot of different choices. The ones you will use most are “All Fields” “Title” “Abstract” and “Claims“.

Using “All Fields” searches all the text in the patent/application, so is the broadest search and will return the largest number of hits. Searches limited to the “Abstract” and “Claims” fields will be more specific and may provide you with more relevant documents. If you do not know what the “Abstract” and “Claims” are, have a look at any patent application on the USPTO web site.

The best way to do the search is going from broad to narrow. Use the “All Fields” search first to see if it comes up with a number of hits that is small enough for you to handle. If it comes up with thousands of hits then you will either want to change your search terms to something more specific, or try the search again using the “Abstract” and/or the “Claims” fields. The principle is easy, just take your time, use lots of two-word combinations, and just keep refining your search until you get the results you need. You may very well have to read through several dozen patent documents, but it is well worth the effort to make sure your invention has not been previously described by someone else.

Step 3 – Other useful patent search tools include the following which you may optionally want to use:

The World Intellectual Property Organization (WIPO) search engine: http://www.wipo.int/patentscope/search/en/search.jsf

The European Intellectual Patent Office search engine: www.epo.org/searching

The Google Patent Search Engine: http://www.google.com/patents

You’re not going to find everything in your search, but if you spend enough time looking, you should have a reasonable probability of finding the most troublesome prior art and knowing whether or not it is worth filing a patent application.

What you are (not!) looking for is a single patent, patent application or other publication that describes each and every element of your invention. If you find this sort of document, then sadly your search is over and you should not file. It does not have to have been actually patented, only described. If you do not find such a publication, then it does not necessarily mean that your invention is novel and patentable, but at least you have not found evidence to the contrary! The more searching you do, the more certain you will be about patentability. But you can never be 100% sure. Once you have done the patentability questionnaire and done your patent search to an extent that you feel comfortable with, sign up with PatentPathway.com and get started on your patent application. Remember, you get expert assistance from registered patent agents and attorneys when you need it – so there is always help at hand. But before you sign up, please do read about how the system works in the FAQ section – there will be quite a lot of work for you to do, and we want you to be prepared. If you have any questions please look at the FAQ section first. If you have further questions, then do not hesitate to contact us. We are always happy to help.

Now that you have done the prior art search, don’t forget to do the patentability questionnaire. Once you have done both, select which option you want to go with – Option 1: No Review option or Option 2: Attorney Review option – and register. We will be here to help every step of the way!