why have attorney prior art search patent

Prior art searches are beneficial to inventors because the search results may reveal that you are better off saving your money, but also because the search provides the knowledge of the closest prior art, and your patent attorney will be able to draft patent claims that don’t encompass the prior art—therefore improving your chances at obtaining a patent grant.

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What is a prior art search for patent applications?

The prior art search is like a due diligence exercise that can reduce the risk of rejection of the patent application. In order to conduct a prior art search, it must first be understood what can act as prior art against the patent application. Prior art is any publicly available evidence that proves that an invention is already known or obvious.

Do I need a lawyer to do a prior art search?

However, figuring prior art for your invention is not as complex as you think it might be. While you could always contact a lawyer or patent attorney to conduct a prior art search on your behalf – saving your efforts and resources in filing fees – it is also possible to conduct a prior art search all by yourself. How?

What are the advantages of conducting a prior art search?

There are multiple advantages of conducting a prior art search: 1 It can avoid wasting money and resources in patent filings and prosecution proceedings if the invention is not unique,... 2 The prior art search helps to identify the closest prior arts and thus can define the scope of protection in patent... More ...

Can prior art invalidate a patent?

There’s just one catch – A prior art could only invalidate a patent if it has been available to the public before the effective filing date of the patent.

Why do you need a prior art patent?

A prior art search helps you evaluate whether an invention can be patented. Without a prior art search, you will be operating in an information vacuum and will not be able to form an educated opinion about whether you can patent your invention.

Does prior art have to be patented?

Generally speaking, prior art arises when someone has either made an idea available to the public, or filed a patent application that was eventually published or issued as a patent. To list some common examples, prior art can include the following: A product that was available for sale. Commercial use of the invention.

What are the benefits of patent search over other forms of prior art search?

Although there are many benefits associated with patent searching to be discussed in this paper, the fundamental benefits relate to:Reducing redundant research and risk of infringement.Gaining insight into competitor activity.Speeding up the time to commercialization.More items...•

Does prior art invalidate patent?

In a nutshell, prior art can be used to invalidate the claims in an issued patent by showing that the claimed invention is not “new” or “non-obvious.”

How do I get around a prior art patent?

The best approach is to perform a comprehensive search for potential prior art. Doing so could help you to avoid protracted dispute with the USPTO's patent examiner—or worse, rejection of your application. Many public resources will help you to search existing patents.

What is prior art search in patent?

What is a prior art search? For an invention to be patented, the criteria of novelty and non-obviousness have to be met. A prior art search is undertaken to ascertain whether an invention is new and non-obvious, or not.

What is the impact of prior art search in your invention?

The prior art search helps to find out the closest prior arts and thus can describe the scope of protection present in patent claims. Even prosecution time can be reduced due to the need for fewer office actions and claim amendments.

How prior art search helps an innovator for their idea?

The prior art search helps to identify the closest prior arts and thus can define the scope of protection in patent claims. This can even lead to a reduction in the prosecution time due to the need for fewer office actions and claim amendments.

Who should perform prior art searches?

While you can conduct the prior art search yourself, you'll likely still need a patent attorney to help you develop a patent strategy and analyze patentability. On the other hand, if you're working in a technical field where you don't have extensive experience, you should probably hire someone to do the search for you.

Can you patent something that already exists?

Can you patent an existing product? No, you cannot get a patent on an existing product because it does not meet: the novelty requirement and. the inventorship requirement.

What are the grounds on which a patent may be invalidated?

If one can prove that the invention was known or used by others in the U.S. or patented or described in a publication in any country before the invention thereof by the applicant, the patent is invalid. In order to obtain a patent, the invention must be useful, novel and unobvious.

Can you patent something that is already published?

According to U.S. law, a patent cannot be obtained if an invention was previously known or used by other people in the U.S., or was already patented or published anywhere in the world.

What is patent validity?

Patent validity or invalidity search is a comprehensive prior art search – conducted after the issuance of a patent – either to authenticate the enforceability of a patent’s claims or to cancel one or more claims of a patent, correspondingly.

Why do you need to do a prior art search before filing a patent?

Conducting this search before filing a patent application can help ensure that the application won’t be rejected. And if, during the search, something does qualify as prior art, you can save your money by not opting for the already existing idea to get patented, or, you can make enhancements in the features of your invention to render it as a unique idea.

What happens when you submit a patent application?

When you submit your patent application to the PTO, the examiner conducts a prior art search to figure if there exists any art before the filing date of the patent application that could deem your idea invalid. If such art exists, your patent application gets rejected and you might have to make some amendments in the claims of your invention, ...

What is prior art search?

A Prior art search is a dedicated search to figure if there exists any evidence that could deem a patent/application invalid. Prior art searches include three types, based on the purpose of the search, i.e. Novelty Search, Invalidity Search, and FTO Search.

What happens if your patent application is rejected?

If such art exists, your patent application gets rejected and you might have to make some amendments in the claims of your invention, such that it does not have any overlapping prior art. And if your patent application surpasses this phase, you will get a grant for your patent.

What happens if prior art is found?

In any of these scenarios, if prior art is found, it could reduce the scope of your patent or deem your granted patent, invalid. Now that we know how prior art could impact the grant process of your application and validity of your granted patent, let’s have a deeper look at it.

What is prior art?

Prior Art is a reference of some type in some form (textual, visual, audio, etc.) which serves as clear proof that the invention you hold is not something unique. It is evidence that your invention is already well-known and not something unique.

What Is a Prior Art Search?

The prior art search is the project of intelligently cutting into that mass of worldwide information—all that is currently known in the state of the art—and figuring out if your new technology is patentable, and if the Point of Novelty is different or new, and not obvious, relative to everything else that is known.

What are the Benefits of Searching Prior Art?

There are a number of benefits to searching prior art, but for starters, when we know “what is already out there,” our next actions begin to take shape. We may begin to ask:

What is the purpose of patentability search?

Even when a patentability search does not prove the invention unpatentable, a patentability search almost always provides information that is useful in drafting a patent application. The results of the search will identify prior art that is close to the invention, allowing the application to be drafted in light of that prior art. If the prior art is close to the invention, areas that are patentable in spite of that prior art can be emphasized in the patent application. If the patentability search had not been conducted, it is likely that too much time (and money) would be spent describing aspects of the invention in the application that were not patentable, while not enough time is spent describing the aspects that are more likely patentable.

Why do inventors use patentability searches?

In spite of this fallibility, inventors use patentability searches to prevent the filing of patent applications on unpatentable inventions, and therefore the searches are extremely useful even if the patentability search won't correctly identify all unpatentable inventions.

What is the job of the patent office?

It is the job of the patent office to compare each patent application with what others have done to see if the described invention is new and non-obvious. A patentability search is performed by an inventor (or her attorney) before the application is filed to determine the same thing--is the invention new and non-obvious.

What is prior art in patentability?

The concept of prior art includes all public disclosures before the filing date of a patent application, including US patents and patent applications, patents and applications from other countries, web pages, advertisements, and any physically created items or previously provided services (see Bitlaw's discussion on prior art searching for more information on what qualifies as prior art).

What should the results of a patent search be used for?

The results of the patent search should be used to determine whether your invention is not patentable, or whether the scope of what you consider your invention should be narrowed given the results of the search.

Why do we use patentability?

Use a patentability search to avoid wasteful patent applications. Frequently a patentability search will uncover prior art that proves that the invention being considered for the patent application is not new, or that the invention is simply an obvious variation of what others have already done.

What happens if someone offers you a money back guarantee?

Be careful if someone offers you a money-back guarantee if you don't like the results of your search. These providers have a strong incentive to keep you happy so that you request further services from them. If they truthfully tell you that you do not have a strong likelihood of obtaining a patent, they will expect that you will request your money back and they will lose you as a customer. In other words, they have a strong motivation to put a positive spin on all search results, even when the search result is quite negative.

What is an invention?

In general, the term 'invention' means a unique product or process. The invention must: be novel – it must have at least one feature which is not present in single prior art; be non-obvious – it must have at least one feature which is novel and should not be obvious to a person skilled in the field of the invention in view of a combination ...

How can an idea qualify as an invention?

Many people have great ideas, but cannot obtain patents for them as they are not inventions. An invention must fulfil certain patentability criteria, which can vary across jurisdictions.

What is prior art search?

The prior art search is like a due diligence exercise that can reduce the risk of rejection of the patent application. In order to conduct a prior art search, it must first be understood what can act as prior art against the patent application. Prior art is any publicly available evidence that proves that an invention is already known or obvious.

Why is prior art search important?

The prior art search helps to identify the closest prior arts and thus can define the scope of protection in patent claims. This can even lead to a reduction in the prosecution time due to the need for fewer office actions and claim amendments. The prior art search is like a due diligence exercise that can reduce the risk of rejection ...

How to patent an invention?

An invention must fulfil certain patentability criteria, which can vary across jurisdictions. In general, the term 'invention' means a unique product or process. The invention must: 1 be novel – it must have at least one feature which is not present in single prior art; 2 be non-obvious – it must have at least one feature which is novel and should not be obvious to a person skilled in the field of the invention in view of a combination of multiple prior arts or a single prior art and common general knowledge; and 3 have industrial application – most jurisdictions proscribe patenting in certain areas (eg, scientific theory, new animal or plant varieties, methods of treatment, algorithms, mathematical formulas, business methods and software).

Can you read the title and abstract of the search results?

For this purpose, only the title and abstract of the search results can be read for the first level of screening, and then other sections of the search results can be seen at the second level of screening, if required.

Can prior art be complete?

However, a prior art search can never be complete. It can never be said with certainty that no prior art exists as the search requires skills, training and practice. Nevertheless, an inventor should attempt to carry out a comprehensive prior art search in order to minimise the risk of rejection of the patent application or invalidation ...