What is Prior Art?
Prior art in the context of patent searches is any publicly-available evidence that the invention was already known at any earlier time. Prior art does not need to be a physical product or be commercially available. It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to the invention.
Types of Prior Art Searches
Identifies boundaries of the invention claimed and often opens up new opportunities to expand the boundaries of the claimed invention or fortify the specification to distinguish the invention from art that may be deemed close
Freedom-to-Operate (FTO)/Clearance Search
- Identifies third party patent claims that can potentially impact commercial production, marketing and use of a new product, process or service
- A business entity may use the FTO search to understand the risk of infringement proceedings being brought against them if they make/sell a product
- An FTO primarily focuses on the claims of patents in-force in the jurisdiction where the manufacture or sale of products/processes will take place
A validity search is conducted for art that was known as of the filing date (or priority date) of a granted patent with a view to confirm/challenge its patentability
A landscape analysis provides a high-level view of the technology space
- Landscapes searches are normally performed to understand the lay of the land when entering a new technological area
- Landscape analyses include recent trends in technology, competitors, filing activity, and white-space/adjacent technologies
Why perform a Prior Art Search?
A patent is a government-awarded monopoly to protect intellectual property that was developed with considerable investment of manpower, money and time. The prior art searches help uncover what is known and can be used to justify or challenge the monopoly granted to an entity for their invention. Depending on the party conducting the search and the stage of the invention’s lifecycle, the prior art search may have any of the following objectives:
- to assess the novelty or non-obviousness of the disclosed invention
- to better understand where a specific technology fits within a domain, which is useful when drafting a patent application
- to enable identification of relevant entities and potential infringers, and the evolution of technology mirrored by patent filings
- identify relevant art that if overlooked may cause a manufacturer to be found liable for patent infringement with associated damages
- to overcome infringement assertions and identify invalidating art
- to assess the strength of a patented invention, such as during a due-diligence exercise conducted when acquiring or licensing technology