Patent Basics III - Prior Art

(This is the third post in my series on Patent Basics; the first two posts can be found here and here. My previous series on Trademark Basics has been consolidated on my website at www.kdtalcott.com. Future "basics" series will cover copyrights and trade secrets.)

What is “Prior Art,” and Why Should I Look for It?

Patents are only awarded for inventions that are “novel” -- in other words, new. You won't be able to get a patent for the light bulb unless your version of the light bulb is an improvement over all of the other light bulbs that have ever been invented and disclosed in some way to the public. Those earlier versions of the light bulb are part of the “prior art.”

Inventors have an obligation to tell the Patent Office about any prior art that they're aware of that may relate to their inventions. But that of course is not the main reason for conducting a search to find possible prior art before you file your patent application. There are a number of more practical reasons for doing so.

Prior Art Search Benefits

• A prior art search will help you figure out whether your invention is truly 'novel.' Why spend thousands of dollars on a patent application for an invention that someone else has already thought of?
• A prior art search may help you refine and improve your invention. “Stand on the shoulders of giants,” so to speak, and see what others have done. Their work may inspire you to improve on your original idea.
• A prior art search will show you what you may need to 'design around.' Since you can't patent what's already been invented, you may have to develop a different way of doing what your invention does in order to avoid infringing an existing patent. A workable design-around can be valuable if the owner of the prior art patent refuses to license their invention on reasonable terms. A design-around can then become a cost-effective way to compete with a product or process that is protected by such a prior art patent.
• A prior art search will help you understand whether your invention is a significant improvement over existing inventions, or an incremental advance. In either case, that information will help you decide whether it is worth investing in the patent application for your idea. An incremental advance that overcomes a significant marketing or operational problem that exists with the prior art, for example, may be very valuable. On the other hand, if your idea does not add much value to the existing invention, you may decide to invest your money elsewhere.

How to Conduct the Prior Art Search

There are services that will conduct a prior art search for you, of course for a fee. The quality of these searches can vary widely, and often depend on how much you spend. One thing that I explain to every client is that nobody will conduct as thorough a prior art search as someone who is accused of patent infringement. In other words, a prior art search that is paid for by an inventor, and may cost hundreds of dollars, will not be as thorough as one conducted by an accused infringer that stands to lose millions of dollars in a patent infringement suit.

That's a fact that patent owners simply need to accept. A reasonably-priced, reasonably-thorough prior art search is likely to provide a good indication of existing, similar inventions that are out there. But it cannot be considered to be definitive.

The patent search services tend to be very adept at searching U.S. Patent Office records, which in many cases are an excellent source of prior art. Existing patents and published patent applications are likely to form the bulk of the results of most prior art searches from such a firm. If your invention is one that is in a 'traditional' line of inventions – in other words, not a business method – then a Patent Office-focused search may be sufficient.

If, however, the invention is in a new field of science or technology, or is a business method invention, you should make sure that the prior art search goes beyond the Patent Office, and includes areas where publicly-available information about the particular field of endeavor is likely to be found. This includes the Internet, but can also include key university libraries as well as foreign-based information sources.

In some cases – mainly in areas where the inventor is at the cutting edge of the technology – the inventor may be an excellent source of prior art. In any case, it's always a good idea to check with the inventor to find out what information he or she has about the existing state of the technology and other inventions that may be out there.

Where to Search

If you want to do some or all of your prior art searching yourself, here are some good places to start. Of course Google or some other comprehensive search engine is first, provided you are adept at crafting searches that will yield enough relevant 'hits.' Google also has its own patent search engine, available at http://www.google.com/patents, that is a great help insofar as it goes. Clicking on the “Advanced Search” option opens up a detailed search menu that you can use to help narrow down your search results. I have found, however, that Google Patents is not kept up to date, and many recently-issued patents and recently-published applications are not included in the scope of its search, making this otherwise excellent search tool something that is ultimately unreliable for prior art searching.

There is, of course, the United States Patent Office website at www.uspto.gov. The main page will give you a link to the Search section, where you will quickly learn that the PTO is not exactly on the forefront of intelligent search technology. Still the information is there, and if you know something about a particular inventor or company whose work may be part of the prior art, a PTO search may be an efficient way to see what they've patented. If you really want to dive in to the nitty-gritty of how to search using the PTO's patent classification system and other similar tools, you can look at what the PTO tells its examiners about searching prior art here: http://www.uspto.gov/web/offices/pac/mpep/documents/0900_904_02.htm .

Finally, don't forget that a foreign patent or invention disclosure can also be prior art. There are a number of databases where you can conduct a search of foreign patents. The World Intellectual Property Organization provides a short guide to some of them here: http://www.wipo.int/sme/en/documents/prior_art.html#P72_8069 .

Some sort of a prior art search is an important part of the application process for any patent application. Whether your resources permit you to hire a search firm, or you conduct the search yourself, if you move forward with a patent application a prior art search will be a good investment.

The next post in this series will cover the difference between provisional and non-provisional applications, and the basic structure of the patent application.