Patent Prior Art Research

Prior Art Research

Prior art research identifies granted patents and published patent applications for innovations that are the same, similar or serve the same function as the proposed innovation. Prior art research may also include review of scientific academic, technical, industrial, trade and business publications in order to identify disclosures of relevant prior art. Patent prior art research is an essential tool used across all patent matters. It provides the basis for freedom to operate and a determination of patentability, an understanding of the state of the art,  a view of the patent landscape (what has been patented, when, where and by whom), and identification of the white spaces in the landscape where patent protection is still available. Prior art research is not a one size fits all service and it must be tailored for each specific project in order to be effective and cost efficient. In many instances, the prior art research may be performed in stages, e.g. where the positive results of one stage of research in support of use, will provide the basis for a second stage of research in support of patentability.

Knock-out Search

Knock out prior art research takes a broad look at the relevant technology to identify any protected prior art that would prevent the use of the proposed invention, or prevent the patentability of the invention as novel. It is a fast and cost efficient means to identify patented technologies that will likely block the patenting of the proposed invention. It provides an overview of the relevant technologies in an effort to access whether the invention is patentable as is, or whether modifications or further innovations will be required. A clean knock-out search may then be used as the basis for a full patentability search.

Freedom to Operate (FTO) Research

FTO research will identify published patent applications and granted patents that may expose the use of the proposed invention to claims of infringement. An FTO analysis will also identify relevant patents that have expired providing an indication of whether the elements of the proposed invention are now within the public domain. In this respect, an FTO may also be used as a basis for a patentability study.

State of the Art Research

State of art research provides information on the patent development in a specific technology area from a given time through current innovations. It provides a means to examine what innovations have been developed and patented in a specific device or area of technology.  The information may then be used to identify areas of patentability for proposed inventions. State of the art research will necessarily include a review of published patent applications and granted patents and may include both domestic and foreign applications and grants. The research may also include a review of scientific, academic, technical, industrial, trade and business publications that help describe the state of the art.

Patentability Search

Patentability research will identify relevant patent references in order to determine whether the proposed invention is novel and non-obvious and therefore patentable. The research may also be used to support claims of utility. Patentability research will include a review of published patent applications and granted patents, either domestic, foreign or both, and may include a review of scientific, academic, technical, industrial, trade and business publications

Invalidity Research

A patent invalidity search seeks to identify prior art that may be used to invalidate the claims of an existing granted patent. Typically, invalidity research is used to defend claims of infringement in that if the claim of the infringed patent can be shown to be invalid, as a result of the existence of prior art, no infringement exists. The research may also be used in support of a petition to initiate an inter partes review of the patent directly with the USPTO.

Patent Landscape Research and Whitespace Analysis

Patent landscape research seeks to identify the current state of the art in a given technology area at a point in time.  The research provides a snap shot view of the relevant patent applications and grants surrounding the technology. A patent landscape report prepared in the early stages of R&D can provide information that is essential to the proper development of an innovation. A landscape report will provide the owner of a proposed invention information regarding;

1. what has been developed and the extent of patent activity in the given field;

2. who is developing the technology (inventors and assignees) and identification of competitor’s patent activity in the field;

3. where the technology is being developed (patent activity per country, region or worldwide);

4. when the technology was developed (identification of patents still in force and those that have fallen into the public domain, indication of patent trends);

5. why the technology has been developed (indications of the driving forces behind the development of the technology).

A full understanding of the patent landscape at the early stages of development, will allow the innovation to develop without fear of infringing patents in the landscape. It allows the opportunity early on to make modifications in the innovation that may be necessary in order to successfully navigate the patent landscape and find a home for the invention within the landscape.

Whitespace Analysis

Whitespace analysis seeks to identify potential areas in the technology where patent protection is still available. Based upon the results of a patent landscape study, a whitespace analysis will identify those open areas or “white spaces” in the landscape that, for whatever reason, are absent of patent development. Performed in conjunction with the patent landscape at the early stages of development, the whitespace analysis may help to drive the direction or expansion of the proposed invention by identifying those areas in the technology where the proposed invention may be patentable, or where it may be feasible to expand the technology into other patentable areas.

Research Tools

1. Patent Research

Patent prior art research is performed using a platform to access an international database of patent information including bibliographic information and full-text of patent documents from over 100 patent issuing authorities worldwide. The research platform offers additional patent information and related services, such as direct links to patent registers, legal status, copies of original patent documents, alerts, translations, graphs/charts, analytics and more. It facilitates the combining of full-text searching with the eight main international patent classifications (IPC) and produces results grouped by patent families.

Capabilities;

► Over 48 million patent families dating back to the early 1900s.

► Searchable and on-demand machine translations.

► Rapid alert service available to keep updated on technologies or competitors.

► Integrated PDF, Excel, Word format ordering, legal status, registers, analysis tools and more.

► Analytics offers instant analysis of up to 100,000 records at a time.

Data can be analyzed in the following areas:

  • Jurisdiction
  • Year
  • Assignee
  • Inventor
  • Classification
  • Keyword

The various areas can be analyzed using different criteria by;

| Patent Family | Priority | Application | Grant Publication |

A ‘Combined’ view of all or a number of the above criteria is also available.

Results are available as charts or spreadsheets in customizable reports.

2. Scientific, Academic, Technical, Industrial, Trade and Business Publications Research.

Non-patent publication research is performed on a number of science and technology research platforms, websites, journals, industrial and trade organization publications, business and academic publication resources. These resources provide coverage for millions of scientific and technical publications and research materials, from thousand of sources worldwide.