Prior Art provides background information for writing the patent application and helps shape the scope of the claims.

1. Searching for Prior Art:
Moving From the Search Room
to the World Wide Web
By:-
Dr. Seweta Srivastava
Assistant Professor
Lovely Professional University, Jalandhar, Punjab, India

2. Overview of Patent Search
• Major source of this information :
Literature SearchLiterature Search in technical journals and non-technical
literatures.
Patent SearchPatent Search in granted patents and published patent
applications.
• Study states that 75% information, which is available as
patent documents, are never published elsewhere.
• Exceptional source of technological information

3. What is “Prior Art”?
• We have all heard the term “state of the art.”
• The term “useful arts” is used in Article 1, Section 8
of the Constitution.
– “The Congress shall have the power to … promote the
progress of science and the useful arts…”
“Prior Art” is the technology that was known
before.

4. Why Do a Prior Art Search?
To uncover what has been done before:
• Determine if the idea warrants the time and
expense of filing for a patent.
• Also, provides background information for writing
the patent application and helps shape the scope
of the claims.

5. Cont’d…..
• To discover whether or not a particular invention is truly
original or if, in fact, it has already been patented.
• Competitor tracking
• Avoid patent infringement
• Learn more about your field of invention
• Save the cost of patenting process
• Learning more about a new field
• For market information
• Technology tracking
• Getting a general idea of how an application and patent
is structured to help in the preparation of your own
application

6. Where Does One Find Prior Art?
• Everywhere!
However, it is best to look in
the places most likely to
contain information about a
particular technology.
TARGET THE SEARCH!

7. • Outline the invention
• Think about where most relevant information would
be. A lot depends on the nature of the invention.
Patents (Granted & Published Applications)
Websites & Databases (eg.,Google.co.in)
Scientific Papers
Journal , Magazine & Report Articles
Book, Manual, Catalogues & Brouchers
Public discussions (conference and seminar)
Newspapers
Dissertations
Trade shows, Public Display
Products, devices & equipments
How Does One Start a Prior Art Search?

8. IP Cell recommends inventors to engage in four
phases of a prior art search.
Short-listing of keywords
Exhaustive search of databases
Extensive Internet-based search
Analysis and Interpretation of search results
Cont’d…..

9. Types of Patent Search
• Novelty searches : Patentability searches
• Infringement searches : Clearance, Freedom to
Operate, or Right To Use
• Validity searches : Invalidity, Enforcement
Readiness
• State of the Art searches : Collection searches
• Patent Landscape Search : Analysis on data generated
by State-of-the-art search

10. Searching for “Prior Art” in the Early
20th
Century

11. Searching for “Prior Art” in the
21st
Century

12. Claims & Elements
• Patent must contain at least one claim
• Usually contains several claims
– Claims are numbered and clearly distinct
• Infringement of single claim is sufficient for infringement
– Need not infringe two or all claims
• Each claim usually contains several elements
– Infringement requires correspondence between each element of
a claim and an element of the allegedly infringing product or
process
– In literal infringement, the correspondence is exact
• Accused device or process has element exactly matching
description in a patent claim
– In doctrine of equivalents infringement, correspondence is not
exact, but elements are “similar” and “equivalent”
• Elements in patent and accused device or process perform
the same function in the same way to achieve the same result

13. CLAIMS
Claims define the legal effect of the patent!
Learn a new VERB: READ ON
- if a claim READS ON the prior art,
the claim is INVALID
- if a claim READS ON an accused
device, the device INFRINGES the claim

14. Liability ≈ Validity & Infringement
In ANY IP case (copyright, trademark, trade
secret), the liability questions are:
IS IT VALID?
IS IT INFRINGED?
The “it” is will vary, of course.
What makes an “it” valid is different, too.
So: What is the “it” in a patent case?

15. Obviousness
• A patent may not be obtained if the
differences between the subject matter
sought to be patented and the prior art are
such that the subject matter as a whole would
have been obvious at the time the invention
was made to a person having ordinary skill in
the art
• The invention must provide one or more NEW
and UNEXPECTED results
• The obviousness standard prevents the
patenting of relatively insignificant
differences between the invention and the
prior art

16. Cont’d…..
• Prior art can be combined in an
obviousness determination, that is,
more than one reference can be cited
by the examiner as showing different
features of the invention which, taken
together, render the invention obvious.
• Obviousness is inherently a subjective
determination, as the examiner cannot
be, or know the mind of, the
hypothetical “one skilled in the art.”

17. Depends on what is in the PRIOR ART.
How do those 2 differ?
1. HOW MUCH ART?
2. What other things matter, besides the art and what it
DISCLOSES?
Anticipation: A single piece of prior art is ON ALL
parts. The claim READS ON this single reference.
Obviousness: Usually more than one reference, but
could be one reference PLUS the knowledge of the
“person of ordinary skill in the art”
Anticipation and Obviousness

18. THE PRIOR ART SEARCH
• A thorough search should also include
both patent and non-patent references
such as journals and other publications.
• The Internet is an excellent source for
prior art information.
• A patent search is not an infringement
search.

19. • A patent search is a search of public patent
records of at least the U. S. Patent Office for
disclosures pertinent to the patentability of the
invention.
• The search can be conducted in Washington in
the search room of the U. S. Patent Office, or
by means of electronic databases (such as the
patent database available at www.uspto.gov).
Cont’d…..

20. Non-obvious to Whom?
• A patent will NOT be issued if a person having ordinary skill
in the field of the invention would consider the invention
obvious at the time of creation
• The law considers a person having ordinary skill in the art
to be a worker in the field of the invention who:
– Has ordinary skill
– Is totally knowledgeable about all the prior art in his or
her field
• Pure Fantasy, but no other realistic way to determine non-
obviousness
– The PTO creates a hypothetical person and tries to
weigh the obviousness of the invention against the
knowledge this hypothetical person would possess

21. Anticipation and Obviousness
What else matters besides <Prior Art>?
Anticipation: NOTHING. Except that the
single piece of Prior Art must ENABLE at least as well as
the patent does.
Obviousness: LOTS.
The PRIMARY CONSIDERATIONS.
(really not much beyond the p.a., but there’s a
formula for them, from the statute and from court
decisions)
The SECONDARY CONSIDERATIONS
Guess which one Accused Infringers prefer to use to
challenge a patent?
What about Patent Owners?

22. SECONDARY CONSIDERATIONS
(1) The invention's commercial success
(2) Long felt but unresolved needs
(3) The previous failure of others
(4) Skepticism by experts
(5) Praise by others
(6) Teaching away by others
(7) Solves an unrecognized problem
(8) Solves an insoluble problem
(9) Copying of the invention by competitors
(10) Omission of Element
(11) Crowded Art
(12) Not suggested Modification
(13) Unappreciated Advantage

23. Combination Inventions
Inventions that combine two or more
elements already known in prior art can still
be patentable, provided the combination is
non-obvious:
(1) Synergism (2 + 2 = 5)
(2) Combination unsuggested
(3) Impossible to Combine
(4) Different Combination
(5) Prior-Art References Would Not Operate in
Combination
(6) References from a Different Field

24. Examples of Obviousness
• Non-obvious: Slight Physical Changes – Dramatic Result
– Sometimes, a very slight change in shape, slope,
size, or material can produce a patentable invention
that operates entirely differently and produces totally
unexpected results
• Non-obvious: New Use Inventions
– Do not involve any physical change to old invention
– Must be different use of known product or process
and produce new, unexpected results
• Obvious: Different Element, Similar Function
– Courts have held that substituting a different, but
similarly functioning, element for one of the elements
in a known combination creates a novel invention but
an obvious one.

25. Cont’d…..
• Obvious: Old Concept, New Form
– The PTO will consider as obvious the mere carrying
forward of an old concept, or a change in form and
degree, without a new result (notches on inner rim of
steering wheel for better grip, obvious because of
medieval sword handles)
• Obvious: Duplication of Parts
– Usually consider the duplication of a part as obvious
unless new results can be observed
• Obvious: Portability, Size, Speed, and Integration
– Making devices portable, making parts smaller or larger,
faster or slower, making elements adjustable, parts
integral, separable, etc. will be considered obvious
unless new, unexpected results can be shown.

26. Searching by Keywords
Can Be Difficult
“A rose by any other name would smell as
sweet…”
(Shakespeare, Romeo and Juliet)
Unfortunately, this also illustrates the pitfalls of text
searching:
•Different words can be used to describe the same thing
•Additionally, the same word can be used to describe
different things

27. Tools for Patent Search
• There are various Free Databases as well as Paid
Databases for Patent Search.
• Important Free Online Databases
Search Databases Website
Google www.google.com
Google’s Patent Search http://www.google.com/patents
USPTO http://patft.uspto.gov/
EPO www.worldwide.espacenet.com
Patent Scope (WIPO) http://www.wipo.int/pctdb/en/
Free Patents Online http://www.freepatentsonline.com/
Patent Facilitation Centre (PFC) http://www.indianpatents.org.in/db/db.htm
Indian Patent Office http://ipindia.nic.in/patent/patents.htm
Big Patent India http://india.bigpatents.org/

28. Tools for Patent Search
Important Paid Online Databases
Search Database Web link
Micropatent http://www.micropat.com/static/index.htm
Derwent
http://www.thomsonreuters.com/products_services/
scientific/DWPI
Aureka
http://www.thomsonreuters.com/products_services/
scientific/Aureka
Delphion http://www.delphion.com/
LexisNexis http://www.lexisnexis.com/patentservices/priorart/
Dialog http://www.dialog.com/
Hoover http://www.hoovers.com/free/
Patent Search Express http://www.patentsearchexpress.com/
Patent Insight Pro http://www.patentinsightpro.com/

29. Directory of Country Wise
Intellectual Property Offices
• A Patent Office is a governmental or
intergovernmental organization which controls the
issue of patents.
• List of country wise patent offices, contact details,
concerned Government ministry and associated
web link address is maintained by WIPO.
• For more details on this follow the link:
http://www.wipo.int/directory/en/urls.jsp

30. Important WebsitesImportant Websites
• Indian Patent Office Website:
http://www.ipindia.nic.in/
• European Patent Office Website:
http://worldwide.espacenet.com/
• WIPO (Patentscope) Website:
http://patentscope.wipo.int/search/en/search.jsf

31. Thankyou

32. Open for
Questions