Prior Art Search: Essential for innovation driven organizations

Bindu Sharma, Origiin IP Solutions LLP

The word “prior-art” in patent law means any information that relates to the knowledge existing prior to the date of invention, which is already available in the public domain. This knowledge may be in any form such as a patent, scientific literature, publications (such as articles in journal, proceedings of conferences, data books and display information from technical exhibitions), public discussions or news from anywhere in the world. The prior-art search is performed by a patent attorney or a patent agent or a patent searcher and is conducted through various patent and non-patent databases and other relevant technological websites to identify the prior-arts.

Prior art search is performed at various stages of product/process development and the purpose of doing it may vary depending upon the requirements. The main reasons for which prior art search is done are:

A. Before filing patent

Inventor may perform prior art search for his invention before filing a patent to make sure that on the day of filing patent application, his invention is novel and there is no existing patent or publication of the invention before he files the patent application.

 B. At the time of planning R & D

Due to heavy competition, today companies spend lots of time and resources for Research and Development. Novelty search may be performed by researchers in a particular area of technology to assess the work already done and based upon such existing knowledge they can plan R & D in a better and effective manner. Prior art search gives a fair idea on the research already done in a particular area of technology and the inventor can work further on it instead of working again on the same area. Prior art search also provides ideas to refine and improve the invention by identifying whether the invention has significant improvement over existing inventions.

C. Before product launch

A company may perform prior art search before launching product in a specific market to make sure that they are not infringing patent rights of any third parties by the product launch. This search is called as “Freedom To Operate search (FTO Serach)” or “Clearance Search”.

D. Technology Landscape studies for devising IP Strategy

The purpose of Technology Landscapes study is to understand the technology trend, strength of competitors, to learn latest technology advancement and analyze the patent activity related to technology of interest. Based on Technology Landscape Analysis (also called as Patent Landscape Analysis), appropriate IP strategy, complaint with business strategy is devised for the companies because a good IP strategy is a critical part of business plan and growth at any stage.

 E. During opposition or revocation

If anyone wants to oppose or revoke a patent application or a granted patent, patent search is necessary to identify the grounds on the basis of which validity of a patent/application shall be contested.

The prior art or patent search is essential for innovation driven companies not only to plan research, take decision on patent filing but also to formulated appropriate IP strategies.