WHAT IS A PRIOR ART SEARCH?
- Prior Art is any directly relevant patent filed or disclosure made prior
to the current
Directly relevant prior art has "priority" over, and therefore prevents
any patent from issuing.
- Before applying for a patent or design, a thorough "prior art search" is
a necessary first step.
- The inventor must also decide on the jurisdictions where they intend selling
their product, so that the searcher can ensure there is no directly relevant
prior art that the inventor might infringe.
Why is a search needed?
- Searching before developing a product preserves valuable time,
energy and money!
Thorough prior art searching tells the inventor who their competitors are,
the risk that the inventor's product might infringe another's,
and the background of their particular field.
- Even though you are probably an expert in the field of
your invention, and haven't seen your invention anywhere,
that doesn't mean that the relevant patent hasn't been filed,
only that its inventor never brought their product to
market. They may still have full rights to their invention.
Also, the high cost of the patenting process sometimes stalls
the marketing & sales of a product.
- Without a search, an inventor risks a lawsuit for
infringement, loss of all past income from sales of another's
invention, and an injunction to stop production or manufacture
of said product.
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How can a search be used?
- When a prior art search is completed, the search data
is collated into a Patent Search Report (PSR), which is
described more fully on the
- The information from a PSR not only tells the inventor
if they can proceed with any application, by knowing that
their invention is truly new, but the PSR also provides a
thorough background of the field of the invention which can be
used when writing provisional, utility or design applications.
- The information from a patent search can also be used
by the inventor to more thoroughly understand their
competitor's products, and maybe even discover a different
approach to their own invention based on the solutions
implemented in earlier inventions.
Limitations of Searches
- A patent searcher is limited to the data available at
the time they are performing the search, and cannot know about
patents not yet posted to patent databases, such as
those held for 18 months in the US, and for up to 30 months
with international filings. These patents are often
referred to as "submarine patents", lurking
beneath the waves, a potential risk to the unsuspecting inventor who hopes they
are not infringing, but who has no way of knowing. This risk is
present to all inventors and inventive companies, no matter
how thorough the search performed.
- The depth of a search should be determined by the
complexity of the invention, the number of directly relevant
competing patents, and the purpose of the inventor. The
inventor may want to know if they can get a patent
(patentability) , whether they will infringe on another's
patent (infringement), or simply whether they will have
"freedom to operate" (i.e. sell their product without risk
of infringement lawsuit).
- Prior art searches performed by Inventive Solutions are
patentability searches. After reviewing the PSR, the client
may request an infringement search, which is an analysis of
the claims of directly relevant patents, as described in the
section on claims analysis grids in
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Who should do a search?
- Patent searching is not for everyone. Expertise in your
field is sometimes too narrow a skill. An inventor might miss
that critical patent that will force them to forfeit their
application fees when a patent examiner finds it, or worse
find out when they are being sued for infringement and to have
their patent revoked.
- For example, you might describe your invention based
how it was developed, and what words make most sense to you.
However, if you used a lawyer, they might describe it with
more broad and obscure terms. The difficulty in patent
searching is that the searcher is trying to find those
relevant patents which have been named by another inventor and
then renamed by their lawyer.
- You need a patent searcher who has a methodical approach
and an experienced understanding of
how to use the patent search databases. They must also be adept at
understanding the nuances of technical and legal language, in
order to consistently focus on the appropriate search parameters to
ensure a thorough examination of the prior art for their
client. For the above reasons, it is also usually more efficient
and practical when the searcher writes the application.
How you can help with the search?
- Before asking for professional help, an inventor often
tries their hand at patent searching, first because it looks
simple to do on the surface, but second because inventors want
to try and learn new things, or they wouldn't be inventive. Sometimes they are thorough in their search habits,
sometimes they are not.
- You can help us do a faster and more thorough search if
you record any relevant search data you have discovered on
your own, and forward it to Inventive Solutions before the
search is begun. Only relevant patent numbers are needed, not the entire
- Given that an inventor is often an expert in the
field of their invention, any information about any related
competing products may also help the searcher quickly zero into
the relevant prior art.
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- An invention disclosure, i.e. a provisional, utility or
design application, should employ drawings not because they
are strictly mandated, as they are not, but because they just
make it easier for one to understand the invention.
- It is mandated that any disclosure be sufficiently
detailed so that "one skilled in the art or science" is able
to make the invention based solely on the disclosure.
- Drawings bring clarity to a disclosure that words often
cannot, as long as the drawings are sufficiently detailed, complete and clear.
- The US Patent & Trademark Office (USPTO) used to be
very strict about the quality and accuracy of drawings, partly
because many engineers used to employ draftsmen to create them. Today, with
CAD drawing programs the rules have become much easier to
comply with, and less stringent guidelines are required.
- One way to discover acceptable patent drawing
practice is to review drawings in issued patents found on the
relevant databases. Or one may review the recent patent
drawings posted on this site.
- Two very useful references on drawing practice are the
relevant sections in the guides for filing
Design patents issued by the USPTO.
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Drawings we can provide
- Drawings required for provisionals, patents & designs
are simply line drawings that show all parts of an invention
from all relevant sides. Inventive Solutions can create these
- While a line drawing is a 2-D representation of
an invention, it can include perspective or isometric views,
and these can only be produced by a computer aided
design (CAD) program.
- Inventive Solutions can generate new drawings or edit
perspective CAD drawings as patent drawings that are
completely sufficient to meet all drawing and disclosure
How to supply
- Due to the availability of rapid prototyping, product
designers, and marketing agencies, inventors often already
have access to quality drawings. There is no need to reinvent
- Engineering drawings, marketing presentations, CAD
prototypes, all can form the basis of patent drawings, as long
as they are in a format that can be useful. If drawings are not available, even hand drawn sketches
can be useful if they show all the parts of the invention, and
they can form the basis of new drawings.
- A basic guide for inventors who intend to provide
digital format drawings is available
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Photographs versus drawings
- Digital photographs can be taken on site, from which drawings can be
- Drawings are usually the preferred method of graphical representation for
provisionals and utility applications, but they may be used for design patent or
industrial design applications.
- Photographs used for design applications must be of sufficient clarity to
show all relevant visual attributes of the design, because the entire basis of
the disclosure rests on these photographs, unlike the thorough written
description that accompanies the utility patent.
- Occasionally, an inventor requires an associated
trademark graphic to identify his product, and this is often
derived from the conceptual or functional nature or appearance
of their invention.
- Inventive Solutions has a background in graphic design,
and can help with the design of graphics related to a current
invention project for the purpose of trademarking.
- Inventive Solutions does not file trademarks or provide
trademark documentation, for which the inventor should consult
a trademark agent.
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