Home > Patent Primer > Prior Art Search
The Prior Art Search
The Need for a
Prior Art Search
The term “prior art” is used to refer to the public disclosure of subject matter that is old enough to limit partially or completely your patentability options. Assuming that you have not yet filed your patent application, just about anything could be old enough to be prior art in this context, although in the U.S. an applicant has a year to file for a patent after his/her own public disclosure. (Also, in some circumstances a patent applicant in the U.S. can receive a patent if he is able to prove that he conceived his invention and reduced it to practice early enough. That option is full of details and can constitute up a separate discussion of considerable length.)
A prior art search in the context of this primer is a search for prior art that resembles your invention. You may find that your idea is not new at all or perhaps major aspects are not new and what remains is not so apparently valuable. You would probably regard such results as bad news, but it would better to know about this early before investing more time and effort (and perhaps emotion) in a patent application that would not end up as hoped. The prior art search would help you cut your losses.
Another potential result of a prior art search is that, although a significant part of your invention is not so new, you believe that there is still valuable subject matter remaining to be patented. With knowledge of the best prior art, your patent attorney will be better able to draft the patent application to focus on the subject that is still new based on the best of your knowledge. There is no use trying to claim protection that you know you will not get.
The Opposing Viewpoint
There are people who do not agree with me that it is worthwhile to search the prior art. Often, people are worried that they might find an unexpired patent that they themselves would infringe when they practice the invention. They could be accused of willful infringement, which if proven means that their liability for the infringement could be increased by as much as three times. By not searching the prior art, they reduce their chances of being held liable for willful infringement.
I do not believe that I would take this approach if I were running the enterprise. If my planned actions would infringe a patent, I would want to know early so that I could change my plans to avoid infringement liability altogether. The above approach, while reducing the likelihood for willful infringement liability, does nothing to reduce the likelihood of “unintentional” infringement liability. That is, the liability without being tripled would still be more than I would want.
I am aware of at least one situation in which a prior art search might be less necessary: If the parties involved, such as the inventors, are so familiar with the technology due to working in the field so long that they believe that it is highly unlikely that anyone has developed anything like their invention – or they would have known of it already – it might be worthwhile to omit the prior art search. I do realize that clients have limits to their budgets. Nonetheless, as a former examiner I know I have surprised some seasoned inventors at times by what I found when conducting my own search of their invention.
For Do-It-Yourselfers
Due to the complexities of patent practice, I do not usually recommend that inventors patent their inventions without professional assistance. However, one of the tasks for which I might agree that a diligent inventor could do himself would be conducting his own prior art search. Although the search may not uncover as much as a search performed by a professional search firm, the difference may be within the tolerance of the client.
Quite a few free on-line databases are available for searching prior art. Several examples are those maintained by the U.S. Patent and Trademark Office, the World Intellectual Property Organization, the European Patent Office, and Google.
Choosing a Professional Searcher
When choosing a professional searcher or search firm, the customer will naturally be concerned about details such as cost, time for delivery of the results, technical expertise of the searcher, etc. One may also inquire as to the resources (e.g., databases and discussions with examiners in the art) that will be accessed when performing the search. I want to add another consideration of which the new inventor may not have been aware.
Except perhaps under rare circumstances, you do not want the searcher to inundate you with a voluminous list of references, especially if there is no clear way to determine what some of the references disclose that is not already disclosed in others of the references. That is, it does not help you to see the same teaching twice. If it is published even once, it has just as much effect on the patentability of your invention as if it was published multiple times. The search firm itself should look though the data itself and extract what is of relevance to you. In perhaps most cases, it should suffice to see four to eight references.
The prior art you receive from a search firm becomes almost an automatic candidate for prior art that you will need to disclose to the Patent Office when you apply for a patent. This topic is to be discussed later.
Prior Art Searches Cannot Be Perfect
A reality not to be overlooked is that, although a good searcher will apply best efforts to find the closest prior art to the client’s invention, the closest prior art cannot necessarily be found. Even if the searcher were able to study every public prior art document in the world in only a few days, other disclosures presently held in secrecy may later become eligible prior art later. These disclosures are recently-filed patent applications that usually will be published about eighteen months after they were filed.
That is, your invention may resemble subject matter that is described in a patent application that has not yet published. If has not yet published, a searcher cannot find it. Nonetheless, if it publishes later, its filing date will precede the filing date of the patent application that you have not yet filed. Thus, the disclosure may form the basis of a rejection when/if you file the patent application. We cannot do anything about this; it is just a risk of the business. It is clear though that millions of people continue to file patent applications nonetheless despite the risk.
Prior art Searches are not Freedom-to-Operate Opinions
A prior art search is not a freedom-to-operate opinion. A fully-competent search, even a fantastic search, may fail to yield prior art that would prevent the grant of a patent. Later, after filing the patent application, the examiner may fail to find prior art to prevent the grant of a patent. You could receive the patent, but that does not mean that practicing your invention would not infringe someone else’s patent. Thus, you cannot assume that a favorable outcome of a prior art search means that you would be free to practice your invention without infringing other patents.
(When I lecture on intellectual property to people new to patents, I dedicate time to explain that a patent is not a right to practice an invention. Instead, it is a right to exclude others from practicing an invention, which can still be a very valuable business asset. A full discussion of this distinction is beyond the scope of the present section’s discussion of the advantages of conducting a prior art search.)
Again, Regarding Whether to Commission a Prior Art Search
Returning to the subject of consciously opting not to commission a prior art search, a client once explained to me his reason that he did not spend as much time as he could on this step: He said that his art was so crowded that, if he were to study every patent claim that conceivably his company might infringe as they carry out their plans, he would never have time to more forward (carry out “any plans”). At some point, his company needed to move forward, and the risk of a holding of “unintentional” infringement liability became small enough to tolerate.
Ultimately, the client decides whether to commission/conduct a prior art search. I explain why I recommend the search, and when I am satisfied that the client understands my reason, even if he does not agree with it, I accept and respect the client’s final decision.
After the Search
After the prior art search is completed, you will need to study the results of the prior art search with your patent attorney to determine how much of the subject matter of your invention remains new, inventive, and sufficiently related to your business plans. (Alternatively, some will make that decision without their patent attorney or even without commissioning a prior art search.) Hopefully, the chances of receiving a patent will still seem reasonable. At this time, you need to start preparing the patent application, which is discussed next.
The term “prior art” is used to refer to the public disclosure of subject matter that is old enough to limit partially or completely your patentability options. Assuming that you have not yet filed your patent application, just about anything could be old enough to be prior art in this context, although in the U.S. an applicant has a year to file for a patent after his/her own public disclosure. (Also, in some circumstances a patent applicant in the U.S. can receive a patent if he is able to prove that he conceived his invention and reduced it to practice early enough. That option is full of details and can constitute up a separate discussion of considerable length.)
A prior art search in the context of this primer is a search for prior art that resembles your invention. You may find that your idea is not new at all or perhaps major aspects are not new and what remains is not so apparently valuable. You would probably regard such results as bad news, but it would better to know about this early before investing more time and effort (and perhaps emotion) in a patent application that would not end up as hoped. The prior art search would help you cut your losses.
Another potential result of a prior art search is that, although a significant part of your invention is not so new, you believe that there is still valuable subject matter remaining to be patented. With knowledge of the best prior art, your patent attorney will be better able to draft the patent application to focus on the subject that is still new based on the best of your knowledge. There is no use trying to claim protection that you know you will not get.
The Opposing Viewpoint
There are people who do not agree with me that it is worthwhile to search the prior art. Often, people are worried that they might find an unexpired patent that they themselves would infringe when they practice the invention. They could be accused of willful infringement, which if proven means that their liability for the infringement could be increased by as much as three times. By not searching the prior art, they reduce their chances of being held liable for willful infringement.
I do not believe that I would take this approach if I were running the enterprise. If my planned actions would infringe a patent, I would want to know early so that I could change my plans to avoid infringement liability altogether. The above approach, while reducing the likelihood for willful infringement liability, does nothing to reduce the likelihood of “unintentional” infringement liability. That is, the liability without being tripled would still be more than I would want.
I am aware of at least one situation in which a prior art search might be less necessary: If the parties involved, such as the inventors, are so familiar with the technology due to working in the field so long that they believe that it is highly unlikely that anyone has developed anything like their invention – or they would have known of it already – it might be worthwhile to omit the prior art search. I do realize that clients have limits to their budgets. Nonetheless, as a former examiner I know I have surprised some seasoned inventors at times by what I found when conducting my own search of their invention.
For Do-It-Yourselfers
Due to the complexities of patent practice, I do not usually recommend that inventors patent their inventions without professional assistance. However, one of the tasks for which I might agree that a diligent inventor could do himself would be conducting his own prior art search. Although the search may not uncover as much as a search performed by a professional search firm, the difference may be within the tolerance of the client.
Quite a few free on-line databases are available for searching prior art. Several examples are those maintained by the U.S. Patent and Trademark Office, the World Intellectual Property Organization, the European Patent Office, and Google.
Choosing a Professional Searcher
When choosing a professional searcher or search firm, the customer will naturally be concerned about details such as cost, time for delivery of the results, technical expertise of the searcher, etc. One may also inquire as to the resources (e.g., databases and discussions with examiners in the art) that will be accessed when performing the search. I want to add another consideration of which the new inventor may not have been aware.
Except perhaps under rare circumstances, you do not want the searcher to inundate you with a voluminous list of references, especially if there is no clear way to determine what some of the references disclose that is not already disclosed in others of the references. That is, it does not help you to see the same teaching twice. If it is published even once, it has just as much effect on the patentability of your invention as if it was published multiple times. The search firm itself should look though the data itself and extract what is of relevance to you. In perhaps most cases, it should suffice to see four to eight references.
The prior art you receive from a search firm becomes almost an automatic candidate for prior art that you will need to disclose to the Patent Office when you apply for a patent. This topic is to be discussed later.
Prior Art Searches Cannot Be Perfect
A reality not to be overlooked is that, although a good searcher will apply best efforts to find the closest prior art to the client’s invention, the closest prior art cannot necessarily be found. Even if the searcher were able to study every public prior art document in the world in only a few days, other disclosures presently held in secrecy may later become eligible prior art later. These disclosures are recently-filed patent applications that usually will be published about eighteen months after they were filed.
That is, your invention may resemble subject matter that is described in a patent application that has not yet published. If has not yet published, a searcher cannot find it. Nonetheless, if it publishes later, its filing date will precede the filing date of the patent application that you have not yet filed. Thus, the disclosure may form the basis of a rejection when/if you file the patent application. We cannot do anything about this; it is just a risk of the business. It is clear though that millions of people continue to file patent applications nonetheless despite the risk.
Prior art Searches are not Freedom-to-Operate Opinions
A prior art search is not a freedom-to-operate opinion. A fully-competent search, even a fantastic search, may fail to yield prior art that would prevent the grant of a patent. Later, after filing the patent application, the examiner may fail to find prior art to prevent the grant of a patent. You could receive the patent, but that does not mean that practicing your invention would not infringe someone else’s patent. Thus, you cannot assume that a favorable outcome of a prior art search means that you would be free to practice your invention without infringing other patents.
(When I lecture on intellectual property to people new to patents, I dedicate time to explain that a patent is not a right to practice an invention. Instead, it is a right to exclude others from practicing an invention, which can still be a very valuable business asset. A full discussion of this distinction is beyond the scope of the present section’s discussion of the advantages of conducting a prior art search.)
Again, Regarding Whether to Commission a Prior Art Search
Returning to the subject of consciously opting not to commission a prior art search, a client once explained to me his reason that he did not spend as much time as he could on this step: He said that his art was so crowded that, if he were to study every patent claim that conceivably his company might infringe as they carry out their plans, he would never have time to more forward (carry out “any plans”). At some point, his company needed to move forward, and the risk of a holding of “unintentional” infringement liability became small enough to tolerate.
Ultimately, the client decides whether to commission/conduct a prior art search. I explain why I recommend the search, and when I am satisfied that the client understands my reason, even if he does not agree with it, I accept and respect the client’s final decision.
After the Search
After the prior art search is completed, you will need to study the results of the prior art search with your patent attorney to determine how much of the subject matter of your invention remains new, inventive, and sufficiently related to your business plans. (Alternatively, some will make that decision without their patent attorney or even without commissioning a prior art search.) Hopefully, the chances of receiving a patent will still seem reasonable. At this time, you need to start preparing the patent application, which is discussed next.