Prior Art Search

A prior art search, is conducted in order to find any prior art in a technical field of interest. This is usually of interest for checking if a technical idea is novel e.g. either prior to an own patent application or to check if a pending or granted patent is valid.

A prior art search is beside the freedom to operate search the most often conducted IP search. As the name suggests, the prior art search aims to clarify on whether claims defining a new invention are novel in the view of prior art. 

It is often conducted if an invention shall be tested on its novelty inventive step and industrial applicatbility. In order to obtain a patent, the invention (claims) needs to fulfill those criteria and must not be disclosed anywhere else before. This question is addressed by a prior art search which is usually performed in house or by a patent lawyer. The patent examiner in the patent office will conduct a thorough search as well on the invention in order to give his opinion. The likelihood of a patent application pass the examiners eyes will increase by a comprehensive prior art search prior to drafting the application. This will save a lot of money as filing, prosecuting and maintaining patents is expensive.

The prior art search also gives insights on how comprehensive the claims can be written. By nature those should be as broad as possible without infringing on other rights.

The prior art search (or in this case validity search) can also be conducted to check if a pending or granted patent is valid. Since prior art searches can never be 100% accurate (see below), relevant prior art might have been overseen by the examiner during the examination process leading to patent claims that were not new (or inventive) due to that overseen prior art during the application process. As a matter of fact, a common misunderstanding is the thought that a patent will give its owner the guaranty of being immune against infringing other IP rights. Due to this being not the case, prior art searches are often conducted by competitors in order to find non-valid patents or too broad claims in patents which they wish to attack to ensure their own freedom to operate or commercial activities.


How to perform a prior art search

 In contrast to the freedom to operate search the prior art search can be narrowed down to the specific technical concept of interest. It is a specific search, driven by the (potential) patent claims. 

  • There is no restriction of the type of publication, hence the prior art must be explored in patent and non-patent publications, such as newspaper, journals presentation, websites, etc.
  • There is no local restriction of the publication. Worldwide publications must always be taken into consideration
  • There is no restriction to the language of the publication
  • There is no time limit for prior art. Hence the search must not be restricted to the last (20-25) years (as its e.g. the case for an FTO search)
  • The search can never be 100% accurate as
  • it’s by nature not possible to explore all relevant publications / literature
  • Patent applications are published 18 months after filing, which leads to a risk that relevant prior art is overlooked as its not yet published
  • There might be a lag in the searched databases, or relevant documents not searchable as they are not ocr published

Prior art searches not only give information on the prior art and the patentability of the invention but also help to understand on how broadly a new invention can be claimed. In general, comprehensive prior art searches also help understanding the market conditions and the important competitors in the field of technical interest better.

The prior art search should be performed by

  • Brainstorming keywords that define the invention and searching them in a patent database
  • Taking classification (such as CPC and IPC) into consideration
  • Expanding the search to non-patent databases and resources
  • Searching for patents of competitors in the same technical field


Options if prior art is found

If during a search prior art is found and the invention (claims) turn out to be not new (novel)

  • and no third party rights are potentially infringed the invention can be commercialized without having the possibility of filing a patent
  • and third party rights are potentially infringed a freedom to operate search should be conducted
  • the invention is potentially patentable
  • a freedom to operate search should be performed


What does a prior art search cost? 

A prior art search can either be performed in house (e.g. in the R&D department), or external by a patent lawyer. It will typically cost between 500€ and 5000€, however strongly depends on the level of detail needed.

 

Difference prior art search and freedom to operate search

The focus of a prior art search is to understand if a potential invention is new. A freedom to operate search tries to clarify whether a potential invention is infringing other IP rights.