Mastering Mechanical Prior Art Searches: 8 Best Practices for Accuracy and Efficiency

Although many inventors and companies seek patents for their mechanical inventions, not all of them obtain patent protection. This is because obtaining a patent is an arduous and time-consuming process. A company or an inventor seeking a patent first files a patent application. Thereafter, a patent examiner reviews the application to check if the invention under examination is worth patenting. Applicants can also perform high-quality prior art searches beforehand to check if their invention is patent-worthy. Prior art searches not only save time but also costs associated with the patent filing process. Furthermore, such searches help an inventor or company to make modifications based on the existing prior arts to come up with a novel and patent-worthy invention. In this article we will discuss the eight best practices that ensure accurate and comprehensive mechanical prior art searches.

What is a Prior Art Search?

A prior art search is conducted to ascertain the novelty of an invention as well as to understand the ideas that are already known about the invention. It involves searching patent and non-patent literature such as published materials, scientific papers, research articles, newsletters, press releases, and blogs. Prior art searches help companies and inventors reduce costs and resource usage during patent filing and prosecution.

Eight Best Practices Associated with Mechanical Prior Art Searches

1. Utilize an Invention Disclosure Form (IDF)

The first step while performing mechanical prior art searches is to have a thorough understanding of the invention. The most important aspects in this process are the invention description and visualization of the working principle from the images shared by an inventor. The best practice for understanding an invention is using an invention disclosure form. Through IDF, one can also understand the novelty of the invention or important key features on which the search needs to be focused. Furthermore, searchers can use IDF and run a search using the name of the inventor or company to identify the closest prior art filed previously by the same company or inventor in the same technology area. This helps in fetching the relevant information to better understand the invention.

2. Identify and Prioritize Key Features of an Invention

To effectively conduct a prior art search, it is crucial to identify and prioritize the key features of an invention. Once a thorough understanding of the invention is established, the search must be structured to ensure efforts are focused in the right direction. A well-defined framework can help streamline this process, making the search more efficient and productive.

One effective approach is VED analysis, a widely used concept in industrial engineering where V stands for Vital, E for Essential, and D for Desirable. that categorizes elements into vital, essential, and desirable. VED analysis methodology translates seamlessly into patent searches. The vital features represent the core inventive concept and should be the primary focus of the search. The essential features support the invention’s functionality and should be prioritized next. Finally, the desirable features, while beneficial, are less critical and should only be considered if necessary. By applying this structured approach, search efforts remain targeted, ensuring that the most relevant prior art is identified efficiently.

3. Share a Calibration Document

After identifying and categorizing the key features of an invention using VED analysis, the next step is to ensure alignment between the search strategy and the inventor’s expectations. This can be achieved by sharing a calibration document, which serves as a reference point for both parties.

A calibration document outlines the various aspects of the invention, including the vital, essential, and desirable features. By sharing this document with the inventor or client, searchers can confirm that their understanding is accurate and that the focus remains on the most critical elements. This collaborative step minimizes misunderstandings, refines the search direction, and ensures that efforts are concentrated on identifying the most relevant prior art.

4. Capturing Relevant Results

Formulating a solid search strategy is essential when conducting a prior art search, and it marks the third milestone in the process. At this stage, it’s important to ensure that your search captures all the relevant documents. There are several best practices that can help with this, such as using search operators strategically to minimize false positives. Running targeted keyword searches is also crucial, especially to address issues related to incorrect classifications by national patent offices. Additionally, replicating search strings with native language keywords ensures that non-English results are included.

To further enhance the accuracy of your search, it’s important to create assignee search strings for both English and native language assignees. Expanding your search with broader classifications can also help, along with conducting smart searches that cover application areas beyond the inventor’s original focus. By combining these strategies, you’ll be able to capture the most relevant prior art for your search.

5. Running Additional or Parallel Searches

The fourth milestone in conducting a mechanical prior art search is shortlisting potential results. One effective way to do this is by running additional searches to expand the scope, based on the type of results you’ve identified, the nature of the search, and the importance of the project. For example, if you’re conducting a design search and aren’t able to find relevant prior art within design patents, you can broaden your search to include utility patents, non-patent literature (NPL), or product searches. This approach helps uncover more relevant results, giving you a broader pool to choose from when shortlisting for your report.

6. Differentiate Between Inference and Assumption

The penultimate milestone while conducting prior art searches is critical analysis. One of the best practices for critical analysis is to draw a line between inference and assumption. For instance, we can infer a particular key feature of an invention, such as “an egg-shaped top cover of a cooking grill” through the image of an identified patent (Fig. 1, portion highlighted in red) even if it is not disclosed in the identified prior art document. However, in another case, it is difficult to accurately predict whether the flaps are fixed or pivotable. Therefore, if we infer the key feature as pivotable flaps based on the image (Fig. 1, portion highlighted in blue), then it would be an assumption to say that the flaps are pivotable as they might be fixed.

7. Analyze Patent Embodiments and Family Members of a Patent

Yet another best practice while analyzing an identified prior art document during a mechanical prior art search is considering all the possible embodiments as well as family members of a patent. In some cases, a patent comprises multiple embodiments in which initial embodiments might not be relevant. However, one of the embodiments might be relevant. For instance, in Fig. 2 below, the relevant embodiments are shown in Fig. 80 and 81 (green checkmark). In case someone analyzes the document based on initial embodiments, then he/she might miss this relevant prior art.

8. Summary of Findings and Threat Perception Charts

The first best practice for the last milestone, i.e., delivering final findings, is that the summary of findings should assist the client in clearly identifying the “patentable subject matter” of an invention. The second best practice is using a customized way for reporting the identified results. For instance, if the end-user of a prior art search is not a patent attorney but a person from a technical background, then you can provide a one-page summary with multiple sections. This allows him/her to understand the patent’s main inventive concept by looking at a single page that provides information related to the field and background of an invention, a problem statement, advantages, and a summary of the patent. Furthermore, in case of freedom to operate (FTO) searches, it is a good practice to provide a threat perception chart. For example, if you are performing an FTO search in multiple countries, then you can show high, moderate, and no threat in different countries depending on the search results.

Conclusion

Securing a patent is a complex process that requires time, effort, and investment at multiple stages. Conducting a prior art search before filing a patent application helps inventors and companies assess novelty, refine their inventions, and make informed decisions.

SagaciousElevate’s Patentability Search service ensures you get the right prior art insights at the right time. Our searches help validate novelty, identify patentable subject matter, and streamline the patent filing process.

Want to dive deeper? Watch our webinar “Best Practices to Conduct Mechanical Prior-Art Searches” for expert insights. To learn more about how we can assist you, contact us today. 

-Shubham Tyagi (Engineering Searching) and the Editorial Team

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