It is focused to provide basic knowledge on prior art search for new intellectuals in the field of IPR. It includes Basic knowledge of Prior art, File wrapper analysis, not list preparation, and one of the important law of Prior Art.

1. By
Manoj Prajapati
Prior Art Search
An Overview

2. Content
• Prior Art Search ?
# Importance
# Types
# Prior art search- What, When, Why, Which & How
# Benefits
• File Wrapper Analysis
• ISR & SISR
• 102 a, b & e Laws of Prior arts
• Not list preparation.

3. What is Prior Art ?
PRIOR + ART
Existing or Earlier or
Previous
Knowledge or
Information

4. Prior art is…
Any evidence that your invention is already known, #Many inventions does not become
product, because of there evidence somewhere
Physical or commercial availability is not must.
Prehistoric cave painting
Centuries old technology
An idea that can’t possibly work
an existing product
Competing art, these are ideas that may not be at all like your invention but do the same
job. So it is important to study competing art for two reasons:
# Most invention are a solution to a problem, and most problems have more than
one possible solution. So examination of all other solution is needed, as some may offer
more advantages than yours
# If you try to exploit your idea commercially, alternative solutions may be
strong competition. In order to argue successively that your solution is better than
alternatives, you need to know what the alternatives are ?

5. Prior Art Search - Importance
- Recommended while drafting a patent specification;
- Legal status : with regard to grant of a patent, whether lapsed or not;
- Assignee search : ownership of patents;
- Patent family;
- Assess Infringement in order to avoid or challenge;
- Market monitoring;
- In-Licensing / Out-licensing;
- Patent Validity;
- Avoid litigation Impact
- Improved patent application
- Understanding work of other researchers
- Competitive information
- Learning about your field of researches

7. What to Search ?
• Title – may or may not be enough indicative
• Abstract – look for key terms, may or may not be much indicative
• Description – careful analysis of disclosure
• Drawings - Idea about elements of invention
• Claims – covers novel features, significant for infringement, FTO and
validity analysis
Prior art search process involves, patent search as well as product search.
In order to be confident one need to do both much thoroughly.

8. Warnings/Precaution
- It may take only minutes on the internet to find prior art. If you
do not look for it, companies and investors almost certainly will
do. You are unlikely to get help or funding if they find crucial
prior art that you missed.
- Do not ignore any evidence you do not like. The purpose of a
prior art search is to go looking for evidence you may not like.
- An absence of prior art at the time of your searches may not be
a permanent absence. You should update our prior art searches
periodically as you develop your idea.
- No prior art search, not even an official Patent Office
Examination is regarded in law as a conclusive proof of novelty.

9. Type of Prior art search
Patentability Search
Validity Search
Invalidity Search
Freedom to operate Search
Infringement Search etc.

10. Searching Databases– Patent/ Non-Patent Search
Publicly available Patent
Databases:
• WIPO Patentscope
• EPO or Espacenet
• InPASS
• USPTO public pair
• USPTO text advance search
• UKIPO
• Google Patent
• CIPO
• PAJ
• KIPO
Subscription Based Databases:
• Questel
• Derwent world patent index
• STN
• SciFInder
• Thomson Reuters Innovation analyst
• Chemical Abstract Service
• Reaxys

11. Non-Patent literature Search
• Google Scholar
• PubMed
• Google search
• Science Direct
• IEEE Xplore
• ACM Digital Library
• CITE SEER
• PubChem
• SureChEMBL
• ChemSpider

12. Prior Art Search – Search Strategy
1. Finding the right keywords
To maximize chances of finding relevant information, include
keywords which best describes your idea(Synonyms, technical
terms).
2. Product Searching
• That is similar to your invention/idea (prior art)
• That tackles the same problem (competing art)
• Obsolete technologies
• Products under development
• You can search offline
• Discuss to peoples . with experience

13. 3. Patent Searching
This will be far more important than product searching.
Patent searching involves:
(a) Finding every patent document that is relevant to your
invention
(b) Interpreting the significance of your patent search
findings

14. Benefits Conducting Prior search
• Avoids submitting patent applications with claims that are not patentable
and will be easily rejected
• Determines whether your invention is novel compared to public prior art
• Develops a strong patent claim strategy before you file your patent
application (and reduce the chance of extensive amendments)
• Account for close prior art when drafting your patent application. For
example, you might want to describe advantages or improvements over
relevant prior art, as this can help persuade the patent office that your
invention is “non-obvious”
• Understand how your idea fits into the technological field
• Be better prepared to discuss your invention with a patent attorney and
explain what aspects of your work might be patentable

15. # Patentability Validity/Invalidity FTO
Search Subject
Invention
Disclosure
Subject Patent
Product
Disclosure/
Service
Patent Search Yes Yes Yes
Search Scope Full Text Full Text Claims
Legal Status No No Active/Pending
Non-Patent Search Yes Yes No
Jurisdiction Range No No Yes
Date Restriction No (Generally) No Yes
Quick Overview

16. File Wrapper
Analysis

18. Patent Appeal
Sometimes, an appeal is your only reasonable option in a patent application that has
been repeatedly rejected. The right time for an appeal may be when you’ve exhausted
all other easier options and have tried to compromise as much as possible with a
particular patent examiner. Ex parte patent appeals are decided by the Patent Trial and
Appeal Board (PTAB or Board) of the USPTO.
Refer the link for details:
http://www.patenttrademarkblog.com/pat
ent-appeal-cost-process-final-rejection/

19. International
Search Report

20. International Search
Authority (ISA)
A center of patent office, which tend to act as
Invention Search Authority for the International
application filed.
A person having sufficient educational
qualification is appointed as ISA by PCT
 There are more than 10 ISA worldwide
 ISA looks after the search copy received from
patent office, for its examination
 Search is conducted to look any relevant prior art
that is already out.
 Go through Patent documents, Journals, Non-
technical Journal etc.

21. ISA, examines the received application for its claimed invention, whether it
contains one claim or more. In case of huge no. of claims they may ask for the
additional fee. The application is scanned for the uniformity (i.e. One invention or
more, Uniformity mean document contains only one invention), in case lack of
uniformity applicant need to pay additional charges for conducting searches
Further, title and abstract of the application is analyzed to know whether they
are in compliance with PCT requirement, concise and meaningful. Lack of
compliance, mean applicant needed to redraft invention along with rectifying
mistakes if any
At the end ISA establishes a search report (i.e. International Search Report)
along with a written opinion of ISA

22. • ISR; form PCT/IB/337 & 338
• A report established by the ISA containing citations of documents (prior art)
considered to be relevant for determining, in particular, the novelty and
inventive step of the invention as claimed.
• The ISR also includes the classification of the subject matter of the invention
and an indication of the fields searched as well as any electronic databases
searched.
• Search based on claims as originally filed.
• Search performed according to PCT Examination Guidelines
• The result of the international search are recorded in the International
Search Report.
• The Search Report is published by the International Bureau.

23. Supplementary
International
Search Report

24. • A optional procedure under PCT, generally requested by PCT users,
applicants, agents, or whoever wanted to have a second international search
done during the international phase of PCT procedure.
• Reason:
Sometimes a problem faced that they received a report from ISA, and it
looked as everything is okay, but later on when they enters the national
phase of this particular international application, all the sudden at that
stage the national designated office came up with a new prior art document
which had not been discovered during the international phase nevertheless,
is extremely relevant to the client invention.
• So, In order to prevent such cases, they have asked to introduce a procedure
to have a second authority to also done international search on the same
international application.

25. • Supplementary ISR PCT/IB 375
• A report, similar to the ISR, established during
the supplementary international search.
• Supplementary international search permits
the applicant to request, in addition to the
main international search, one or more
supplementary international searches each to
be carried out by an International Authority
other than the ISA that carries out the main
international search.
• The SIS primarily focuses on the patent
documentation in the language in which the
SISA specializes.

26. • Addresses applicants’ concerns about
additional prior art not found by ISA, e.g.
because of linguistic diversity, Translated
into English if necessary
• Search of supplementary subject matter
not covered by ISR
• Established by alternative authority,
currently offered only by AT, EP, FI, RU, SE
and XN (applicant has free choice)
• No written opinion
• Not published but made available to public
(file inspection)

27. Laws of Prior
art
35 USC § 102 a, b, e

28. 35 U.S.C. 102 CONDITIONS FOR PATENTABILITY; NOVELTY
A person shall be entitled to a patent unless –
(1) the claimed invention was patented, described in a printed publication, or in
public use, on sale, or otherwise available to the public before the effective
filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151,
or in an application for patent published or deemed published under
section 122(b), in which the patent or application, as the case may be,
names another inventor and was effectively filed before the effective filing
date of the claimed invention.
35 U.S.C. 102 (a); Novelty

29. 35 U.S.C. 151 Issue of patent
(a) IN GENERAL.—If it appears that an applicant is entitled to a patent
under the law, a written notice of allowance of the application shall be
given or mailed to the applicant. The notice shall specify a sum,
constituting the issue fee and any required publication fee, which shall
be paid within 3 months thereafter.
(b) EFFECT OF PAYMENT.—Upon payment of this sum the patent may
issue, but if payment is not timely made, the application shall be
regarded as abandoned.

30. 35 U.S.C. 122b; Publication
(b)PUBLICATION
(1)IN GENERAL—
(A) Each application for a patent shall be published, in accordance
with procedures determined by the Director, promptly after the expiration of
a period of 18 months from the earliest filing date for which a benefit is
sought under this title. At the request of the applicant, an application may be
published earlier than the end of such 18-month period.
(B) No information concerning published patent applications shall be
made available to the public except as the Director determines.
(C) Not withstanding any other provision of law, a determination by
the Director to release or not to release information concerning a published
patent application shall be final and non-reviewable.

31. 1. A disclosure made 1 year or less before the effective filing date of a
claimed invention shall not be prior art to the claimed invention under
subsection (a)(1) if—
A. the disclosure was made by the inventor or joint inventor or by
another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor; or
B. the subject matter disclosed had, before such disclosure, been publicly
disclosed by the inventor or a joint inventor or another who obtained
the subject matter disclosed directly or indirectly from the inventor or
a joint inventor.
35 U.S.C. 102 (b);

32. 35 U.S.C. 102 (e);
A person shall be entitled to a patent unless- (e) the invention was
described in-
- an application for patent, published under section 122(b), by another filed
in the United States before the invention by the applicant for patent or
- a patent granted on an application for patent by another filed in the United
States before the invention by the applicant for patent, except that an
international application filed under the treaty defined in section
351(a) shall have the effects for the purposes of this subsection of an
application filed in the United States only if the international application
designated the United States and was published under Article 21(2) of such
treaty in the English language.

33. Not List Preparation

34. It is an essential document prepared prior to start Validity or Invalidity searches in
order to short out the relevant patent references of subject patents
There are many ways of preparing Not List; some of these includes using Espacenet,
Questel Orbit or using Family-izer
 Below are the examples of Espacent and Family-izer;
1. While using Espacenet to prepare Not List, Either of the below mentioned pathway
can be utilized, i.e. short out cited documents of subject patent then find out family
members of cited patent reference or vice-versa

35. 1. Follow the steps to prepare not list using Espacenet
Google Patent
Espacenet
Extract out these
publication
numbers in an
Excel sheet and
repeat the same
in order to access
INPADOC family
members

36. 2. Follow these steps to prepare not list using Family-izer
Take these patents to be included in the Not List
Drawback: It does not show results sometimes

37. In case any query; contact
Email: prajapatidaksha13@gmail.com
“Raising Intellectuals”