September 30, 2023
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Case Studies

13 Reasons Why you could not find the Relevant Prior Art

A single prior art is all it takes to invalidate an invention or to prove that the claimed subject matter is NON-PATENTABLE; similarly, not finding that one relevant prior art at the right time proves DISASTROUS at a later stage. Patents are considered as the strongest form of intellectual property that one can obtain for her work but; as being said “With Great Power Comes Great Responsibility”.

Patenting and maintaining an invention costs thousands of dollars; not stopping here, this cost grows exponentially during Invalidation and Opposition proceedings. The best way suggested to AVOID such unnecessary proceedings is by conducting an exhaustive and high-level Prior Art Search.

Here, we highlight 13 Reasons Why you could have missed out on that ONE RELEVANT PRIOR ART.

Not Understanding the True Essence of the Invention!

Before you commence with the search, understanding the invention is most crucial. One needs to devote a good amount of time towards the understanding part, but many a times people tends to overlook the smaller details and they could never find the right path leading to the relevant reference.

Missing Search Terms!

While formulating search strategy, the part which is of utmost importance is identifying that one Search Term which will fetch the relevant result from the pool of millions of documents. Researcher’s often get too hasty while finalizing the search terms and straight jump to the searching part, which weakens the foundation of the search and results in missing the relevant prior art.

Improper Truncation/Wildcards

Searching for various forms of a word has its own significance. Not ensuring the proper truncation and appropriate use of wildcard operators leads to missing on prior art.

Poor Classifications Strategy

Usually, researchers limit themselves to the classes reading exactly on to the preamble of the invention and don’t put much efforts to identify further similar classes which becomes one of the reason why they are left empty handed.

Underestimating F-term

In Japanese Patent Law, patent documents are classified using F-term. Mostly, the researchers try to catch a relevant Japanese prior art using the keywords and IPC/CPC classifications but due to translation errors success rate is very low. Since, Japan witnesses a very high patent filing activity, compromising the importance of F-term results in a hollow search.

Belittled Citations Search

During the search, you encounter documents which read on like the desired prior art but misses some essential features of the invention. In such situations researchers tends to get disappointed and lose hope and forget that citations of such a reference could lead you to your destination.

Assignee Search isn’t that Important!

Inventions belong to a field of technology and every technology has some key players actively involved in the Research & Development of that particular technology. Leaving unnoticed the patent portfolios of those assignees and major inventors in the domain could cost you a lot.

Did you check for the Weak-links?

Often, inventors get too excited about their work and publish it even before filing for a patent. Though, there exist the concept of a Grace Period, researchers must not let such a document uncovered.

Rigid Search Strategy! Why?

When you commence with the search, you already have a list of search terms jotted down. However, during the search journey, a lot of new terms appear that you could have missed in the beginning. Researchers forget to incorporate such newly identified search terms and as being said “Not changing leads to the destruction”.

Restricting to Narrow Applications. Who likes restrictions?

Many a times, researchers restrict the search to very narrow applications of the invention and could not reach the desired prior art existing in an another application of the invention. Since, all applications of an invention are protected by a single patent and a new patent cannot be granted for a newly identified application of an existing invention, not exploring all the possible application areas never proves to be a praised idea.

Sticking to a Single Database

Every database has its own algorithms tailored for specific needs, a single database may not be sufficient to identify the relevant prior art every time.

Not Devoting Enough Time to Non-Patent Databases

A Prior Art Search cannot be termed “Complete”, if the non-patent literature search hasn’t been a part of the study. Researchers must not compromise the Non-Patent search; there have been cases where the non-patent literature proved to be a silver bullet.

Did you try “The Free Form” Search?

Researcher’s often takes the Free-Form search very lightly and stay too much oriented to the operators based search. A Free Form search i.e. “describing the invention in your words and let the machine use its intelligence to interpret it, the machine way” adds on to the human intelligence by incorporating various synonyms that the researcher might have not considered.

Though every Prior Art search has its unique challenges associated to it and may require on the fly changes to the search strategy. One must not forget the basics of conducting an exhaustive Prior Art search. Above shared are some key highlights of an exhaustive Prior Art Search that can help you avoid jeopardizing your hard earned money and wasting your precious time.

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