8 Best Practices to Ensure Accurate and Comprehensive Mechanical Prior Art Searches
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.
Read on to know 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. Conducting prior art searches can help companies or inventors to save costs and resources associated with patent filing and prosecution.
Eight Best Practices Associated with Mechanical Prior Art Searches
1. Using an Invention Disclosure Form
The first milestone while performing mechanical prior art searches is developing a thorough understanding of the invention. The most important aspects in this milestone 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 (IDF). 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. Prioritizing Key Features of an Invention
The second milestone while conducting prior art searches is designing search focus. After understanding an invention thoroughly, it is important to start your search in such a way that your efforts are focused on the right direction. A good practice for achieving this is adopting a framework that helps you to utilize your time and conduct effective searches.
VED analysis is a popular concept of industrial engineering where V stands for vital, E for essential, and D for desirable. This concept is also applicable to the patent industry. Therefore, using VED analysis, the key features of any invention can be easily categorized into vital, essential, and desirable. The vital key features disclose the main ‘inventive concept’ of an invention. Majority of your searching efforts should be focused on the vital key features. Besides these, there are some essential aspects of an invention called essential key features. These key features should always be prioritized over rest of the key features, i.e., desirable key features.
3. Sharing Calibration Document
The second best practice associated with designing search focus is sharing a calibration document with an inventor after understanding the invention and segregating the key features based on VED analysis. A calibration document is a document wherein you can indicate the various aspects of an invention. The vital, essential, and desirable key features can also be included in this document and shared with the client. This helps in aligning your understanding with the client’s requirements and expectations.
4. Capturing Relevant Results
Search strategy formulation is the third milestone while conducting a prior art search. During this step, you need to ensure that you devise a holistic search strategy for capturing all the relevant documents. Although there are multiple best practices for formulating a search strategy, some of the most important ones include smart usage of search operators to minimize false-positive results, running targeted keyword-based search query to address issues related to wrong classifications by national patent offices, and replicating search strings using native language keywords for capturing non-English results. Some other best practices for capturing relevant results are – creating assignee search string for English or native language assignees, running a search string comprising a broader classification, and conducting smart searches to cover application areas beyond the inventor’s application area.
5. Running Additional or Parallel Searches
The fourth milestone while performing mechanical prior art searches is shortlisting potential results. One of the best practices for shortlisting such results is performing some additional searches by further expanding the scope of the search depending on the type of identified results, nature of the search, and stakes of the project. For instance, if you perform a design search and are unable to find any relevant prior art in the design patents, then you can run additional utility patent, non-patent literature (NPL), or product searches to identify a closer prior art. This allows you to get better search results that can further be shortlisted for preparing a report.
6. Inference vs. 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. Considering Embodiments or Family Members of a Patent
Yet another best practice while analyzing an identified prior art document during mechanical prior art search is considering all the possible embodiments as well as family members of a patent. In some cases, a patent comprises of 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 analyses 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, 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.
Securing a patent for an invention is not only difficult and time-consuming but also involves costs at multiple stages. Therefore, inventors or companies perform prior art searches before filing a patent application with the concerned patent and trademark office (PTO). Sagacious IP’s Patentability Search service intends to provide clients the right prior art at the right time. These patentability searches help clients in validating the novelty of inventions, retrieving the patentable subject matter, and making decisions regarding patent filing. Click here to know more about the service and click here for the webinar on this topic.
-Shubham Tyagi (Engineering Searching) and the Editorial Team