Creating patent applications from inventions is a techno-legal collaborative process. It starts with an inventor conceiving an idea, nurturing and developing it further, and collaborating with other inventors, R&D and business teams, as well as patent experts for creating patent applications. This collaboration evolves through various stages highlighted in the figure below. During this patent evolution process, each stage is inter-dependent on the output of the previous stage. The following article explores the relationship between the two consecutive stages: Prior-art search and patent application drafting.

Performing Prior-Art Search

Prior-art search is a process of searching and identifying technical/non-technical literature disclosing concepts that are similar to the invention and inventive concepts disclosed by the inventor. Prior-art literature can be in the form of references or documents comprising: published patent applications, issued patents, research papers, technical disclosures, product documentation, marketing or technical brochures, books, etc.

The identification and analysis of prior-art documents is done during the prior-art search phase, and the findings of the search are documented and presented in the form of a report for inventor’s reference and due consideration. The prior-art literature disclosed and presented in the search report is then corroborated with a corresponding patent application draft, which can use the findings disclosed in the prior-art search report in a number of different ways.

How Patent Application Draft Can Use Prior-Art Search Findings

1. Identifying Patentability of the Invention

An invention is considered patentable if it’s not disclosed publicly by way of any prior-art literature. It can be in the form of a printed publication, a previous patent, a public use or sale documentation, or in any manner otherwise. Based on the prior-art literature identified in the search report, a patent expert or the inventor can establish whether their invention is novel and non-obvious. This means that the patent expert and/or the inventor can use the prior-art search findings to check if all the features (specifically novel ones) of their invention can be clearly distinguished from prior-art literature.

If yes, the inventor can safely move to the stage of drafting a patent application for their invention. But if the invention is not clearly distinguishable from the prior-art search findings, then the inventor and their patent expert decide an alternate course for their patent route. This is further described in subsequent ways of using the prior-art search report.

2. Identifying a “Work-Around” Strategy for the Invention

Another way of using the prior-art search findings is to rethink the novel aspects and their weightage in the inventiveness of the invention, in view of the prior-art literature. This means, if some aspects of the invention are more evidently present in the prior-art literature, while others are remotely disclosed, the inventor can step back and re-think his inventive strategy. The inventor can work closely with the patent expert to think of ways to “workaround” the evident aspects and develop and/or enhance the remotely disclosed aspects to give a clear differentiation to their invention in view of the prior-art.

3. Crafting a Prosecution-Proof Patent Application

It is well-known to the patent practitioners (particularly in the US) that anticipation (35 U.S.C. 102) and obviousness (35 U.S.C. 103) are the most common rejections received for a patent application from a patent office. The basis for both these rejections is prior-art documents.

If the inventor and the patent expert are already aware of the closest prior-art documents related to their invention, they can craft the patent application and particularly its claims in such a way that a defensive position for novelty of the invention, in view of the prior-art documents, is already prepared at drafting stage. This defensive position, with reasoned statements and support, can be used to make effective arguments at prosecution stage of the patent application.

Another advantage of prior-art documents is that analysis of related patent prior-art can be used to draft an effective, comprehensive and technically accurate patent application with proper support for all technical aspects, as identified on prior-art basis.

4. Filling Information Disclosure Statement Form

Another advantage of the prior-art findings is that the prior-art documents can be used to fill out the information disclosure statement (IDS) for the inventor’s patent application while filing at the patent office.

Conclusion

Various stages of the patent evolution process, as highlighted in figure 1, are interdependent. This necessitates corroborating findings from the prior-art search phase with the patent application drafting phase. It can be easily done in the ways outlined in this article. Furthermore, this corroboration helps inventors or applicants to prepare for the subsequent phases of patent application filing and patent prosecution, which can eventually fetch them a patent grant.

Sagacious IP’s patent drafting services are focused on preparing a future-proof patent draft with the broadest coverage. Our subject matter experts work alongside the patent draftsman to ensure the preparation of a technically sound application.

-Aastha Uppal (ICT Drafting & Prosecution) and the Editorial Team

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