Learn more about prior art search, its various use cases, and why it should form part of your IP strategy.
A prior art search is a process that involves searching for and examining existing publicly available information to determine if an invention is novel and non-obvious.
The goal of a prior art search is to uncover relevant technology disclosures that predate an invention, or in the context of patents, the effective filing date of the claimed invention.
Prior art is important in determining the patentability of an invention, validity of a patent, and can potentially impact the ability of a business to bring its products and services to market.
The term “prior art” refers to any publicly available information, which includes patents, patent applications, scientific literature, technical publications, product manuals, and other technology disclosures that describe similar or related inventions or technologies.
In the United States, the legal definition of prior art is set out in 35 U.S.C. § 102, which defines prior art as public disclosures that are “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”
In the different stages of the innovation cycle, a prior art search may be conducted to serve various purposes:
Depending on the specific objectives, prior art searches can be categorized into four distinct types, each serving a different purpose:
A patent validity or patent invalidity search is conducted to assess the validity and therefore, the enforceability of an existing patent. One of most common reasons for conducting this type of prior art search is in aid of patent litigation or in the event of a patent infringement suit.
In a patent infringement suit, a defendant may choose to declare non-infringement. Another course of action is to invalidate the claims of the asserted patent. In order to invalidate the claims of a patent, there must be evidence of prior art.
Apart from patent litigation in federal courts, the defendant may opt to use the patent invalidation mechanisms provided by the USPTO such as the inter partes review and post grant review, among others. These post grant proceedings are held before the Patent Trial and Appeal Board (PTAB) and may offer a faster and cheaper resolution compared to costly patent litigation.
Regardless of where a defendant chooses to litigate, there must be a thorough prior art or patent invalidity search conducted to prove that there is prior art.
A comprehensive patent validity search is a crucial component of of a well-informed IP strategy.
A patentability search, also known as a novelty search, is conducted to identify any prior inventions, publications, or other publicly available information that may be relevant to the invention.
Though this type of search is not a predictor for patentability, it can help a patent attorney evaluate the likelihood of obtaining a patent and provide a patentability opinion. This type of search aims to identify prior art that could potentially hinder the grant of a patent due to lack of novelty or non-obviousness.
A patentability search is a complete must before filing a patent application. It offers valuable insights to strengthen the drafting of the patent application, provide ideas for design-around, etc. It is ideal to conduct this type of prior art search even at the early stages of ideation, allowing for a more informed decision regarding R&D direction.
A freedom to operate (FTO) search, also called a “clearance search” is conducted before introducing a new product or service to the market. This search identifies existing patents and other intellectual property rights that may potentially be infringed by the new product or service.
As patent rights are territorial, this type of prior art search is important before entering a new region or market.
The main focus of this prior art search is to determine if there are existing patents in a given jurisdiction that disclose the same elements as the new product or service.
A freedom to operate search will be the basis for a freedom to operate opinion that will be provided by a patent attorney.
A State of the Art (SOA) search, also called a Collection search, is conducted to assess the existing technical advancements in a particular field. It identifies prior art relating to a certain technology which provides insights regarding the patentability of an invention, infringement risks, evaluation of the inventive step, among others.
This wider scope of a prior art search not only identifies technologies that are similar to your idea or invention, but also “competing art” which are technologies that solve the same problem but in a different way.
Parola provided us the key reference
The first search Parola Analytics, Inc. performed for us provided the key reference supporting our invalidity position on a patent we were evaluating.
The work product is top notch!
Vincent Violago and his excellent team at Parola Analytics provide high quality, detailed, prior art search results with minimal oversight and handholding. These guys are highly educated and experienced in their field and work together with great efficiency. The work product is top-notch, and they are always available for follow up, including detailed discussions of the report and additional pinpoint searches based on the results.
Demonstrated deeper understanding of the search
I engaged Parola Analytics to conduct a prior art search on a difficult US patent that had already stymied another search firm that delivered two unusable references. Parola found four much better references in two weeks that demonstrated a deeper understanding of the search and an effective selection of the best references.
Responsive and easy to work with
Parola Analytics is our trusted partner for prior art search contests on PATROLL, Unified Patent’s crowdsourcing platform. With their expertise in prior art searching, Vincent and his team at Parola Analytics are valuable partners in reviewing prior art submissions to our contests. Parola Analytics provides broad knowledge across various subject-matters and offers competitive pricing. They are easy to work with and are responsive to our needs.
Parola delivered outstanding results!
Vincent and his team at Parola are excellent at locating prior art. We have worked with Parola on two matters, and both times, Parola delivered outstanding results. Parola’s highly-relevant search results and reports demonstrated a thorough understanding of the patent claims.
High Quality. Efficient. Reliable.
The team at Parola Analytics did an excellent job in providing us with the highest-quality prior art research service. The team’s search report highlighted the best prior art references with an easy-to-understand format. In short, the team proved itself.
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