By Malia Stokes, Extern
Mercer University School of Law
It’s another day, and you’ve encountered the same problem for what feels like the thousandth time. Just when you’re thinking, “There has to be a better way,” you have a LIGHT-BULB moment! You come up with an idea for a great invention, that you know is going to change the world, and can’t imagine why no one has thought of it before! You prepare to call a patent attorney and get ready to start the process of protecting your new idea! Hold on! Wait a minute! Before you do that, you want to make sure that your grand idea didn’t indeed occur to someone else first. Yes, you will likely need to consult a patent attorney to help you with the patent application process. However, it is a good idea for you to conduct your own initial prior art search as an early step in your journey to seeking a patent.
What Is Prior Art?
Simply put, prior art is any evidence (physical or written), anywhere in the world that your invention is already known, in whole or in part, to the public. If there is evidence that the invention is known – to that extent, you will not be able to obtain a patent for it. You may be able to obtain a patent on a substantial improvement of an existing invention, but only on the improvement, not on the original invention. While an existing product is the most obvious form of prior art, an invention does not need to be commercially available or even exist physically to qualify as prior art. It is enough that some person, somewhere, at some time in the past has described or made something that contains a use of technology that is very similar to your invention. Any evidence of an invention, whether it resulted in a product or not, is considered prior art. This evidence can include information found in:
- U.S. and foreign patents and patent applications;
- Journals and magazine articles;
- Books, manuals, catalogs; and
- Websites and databases.
Why A Prior Art Search?
Now that we understand what prior art is, let’s talk about why it is important to perform a prior art search.
For an invention to be patented, it must meet three criteria:
- Novel – Substantially different from anything else that is in the public knowledge;
- Useful – Functions and serves a purpose; and
- Non-obvious – Not easily occurring to a person of expertise in that invention’s particular field.
A prior art search helps an inventor to know if an invention is new or non-obvious. As an inventor, it is important to be familiar with and understand any prior art so that you can make valid distinctions between the prior art and your invention.
In addition to making sure you do not submit patent applications with claims to inventions that are already patented or described, other benefits to conducting a prior art search include:
- Gaining a better understanding of how your invention compares with what is already on the market and what makes your invention unique; and
- Being better prepared to discuss your invention with a patent attorney or patent agent to explain aspects of your invention that may be patentable.
How to Conduct an Effective Prior Art Search?
Now that we know the WHAT and the WHY concerning prior art searches, let’s talk about HOW to make the most of your search. An effective prior art search will include checking multiple databases to see if an idea or invention similar to yours has already been described. Here are three steps to making your prior art search comprehensive and effective.
STEP 1: BRAINSTORM KEYWORDS TO DESCRIBE YOUR INVENTION
Just because you do not find an existing invention using obvious keywords does not mean that the idea has not been described somewhere. Common terminologies change over time. Also, different industries may use different keywords to describe similar ideas. To conduct a thorough search, you should search a variety of different keyword and keyword combinations that describe the nature of your invention. For example, if your idea is for a novel improvement to gym shoes, you would also want to search for “athletic shoe,” “tennis shoe,” “footwear,” or any other descriptive word to describe shoes that one might wear to the gym. In creating your keyword list, consider any synonyms and technical terms that may be used by others seeking a patent in the same area.
STEP 2: SEARCH MULTIPLE PATENT DATABASES
Due to the sheer nature of how algorithms vary on different databases, it is possible to yield different results depending on which database you use. Therefore, it is important to search across multiple patent databases to look for prior art. Some of the more popular databases include:
- United States Patent and Trade Office (USPTO) database
- Google Patents
- Free Patents Online
- World Intellectual Property Organization (WIPO) database
- European Patent Office database (Espacenet)
Using a combination of these databases will provide a more thorough search of prior art. Within each keyword search in any chosen database, note the top patent documents for each search and then look at other patent documents that reference or are referenced by that particular document. This information can often be found on the same page as the patent under sections titled “Patent Citations,” “References Cited,” or some similar wording.
STEP 3: SEARCH OUTSIDE OF PATENT DATABASES
Because prior art is not limited to existing patents or patent applications, an effective prior art search will include searches of non-patent databases such as:
- Google Scholar
- Amazon or other commercial websites
- Websites and brick and mortar stores that would sell your product
- Articles, publications, or other non-patent literature
- Product pages of companies that may have similar ideas.
STEP 4: THOROUGHLY REVIEW RESULTS FOR RELEVANCE TO YOUR INVENTION
You want to make sure that you find prior art that is relevant to your invention. Any evidence of products, ideas, or descriptions of inventions that are closely connected to your invention will qualify. If it does not relate to what you are trying to invent, there is no need to save it.
STEP 5: DOCUMENT AND SAVE YOUR MOST RELEVANT FINDINGS
You will want to keep a record of the prior art that is most related to your invention to share with your patent attorney or patent agent. This will make it easier for them to assist you!
In following these steps, you will learn a great deal about what products and information are already in existence that relate to your invention. Having this information at your disposal will aid a patent attorney in assisting you in the process of applying for a patent. At the end of this process, you should either have a good amount of the information necessary to move forward in your patent application process or an understanding that you can stop work on that idea and spend time coming up with your next great invention!