What is Prior Art?
Any proof that your innovation is already known is referred to as “prior art.”
Prior art does not have to be physically present or commercially available. It is sufficient that someone, somewhere, sometime previously described, demonstrated, or created something containing a use of technology that is very similar to your innovation.
Prehistoric cave paintings can be considered prior art. Prior art can be a piece of technology that is centuries old. It can be a previously identified idea that could not possibly work. Prior art can be anything at all.
Prior Art Search
To begin the prior art search, the analyst can generate an exclusion list, which includes a list of citations (patents and non-patents) cited on the face of the subject patent and their family members. These citations are generally excluded from the scope of the search, but an exception could be made based on the client’s needs.
This includes a list of citations cited by the examiner during examination, which are also discussed in the file history, and by using these patents we can gain valuable insights into the technology and which types of citations should be excluded from the prior art search scope.
The arguments in the file history can also be used to understand the novel key features and points that the applicant has attempted to defend. The file history also contains the examiner’s search strategies, which can provide the analyst with ideas for constructing search strings or strategies as well as some valuable keywords.
Following that, we can begin with some free automated prior art searching on Google or Google Patents. Furthermore, one can use XLSCOUT’s AI-based tools, which include an invalidator tool, where one can enter the patent number to be invalidated and it will generate a bucket of patents automatically.
Other jurisdictions’ family analysis and prosecution history analysis: In this search, the bucket containing the backward citations of the subject patent’s family members is extracted, and the patents on the exclusion list are removed from the former bucket. The list of remaining patents can be analyzed to find relevant prior art.
Then we can perform some basic prior art searches like:
This is the bucket of patents produced by extracting the backward citations of the subject patent’s forward citations. As well as the forward citations of the subject patent’s backward citations. This bucket is then reduced by attaching the search cut-off date, as well as a few classes or search keywords. Citation Analysis can be performed on any database.
These intelligent methods of prior art searching assist in quickly locating relevant prior art. Furthermore, they provide the analyst/researcher with deeper insights, keywords, synonyms, and/or classes that can aid in furthering the search. Furthermore, certain citations may already be known to the client. This can provide the searcher with in-depth knowledge of the domain, the claim’s missing factors, important assignees and classes, etc.
In the next step of the search, the analyst can use keyword and class-based strategies/strings. These strategies can be developed using a variety of paid and free databases, including Orbit, XLSCOUT, Patsnap, Google patents, Lens.org, IEEE, IETF standards, ETSI, Espacenet, J-PlatPat, and others. These strategies cover the claim scope by going from narrow to broad, using all possible methods, keywords, strings, and classes.
Following that, the analyst’s bucket of citations/patents/non-patents extracted from the above searching process can be utilized in the following ways:
- The top assignees and inventors in the bucket can be extracted and specifically searched for
- Analysis of top patent/non-patent citations/references on the face
- From these patents, classes can be extracted and used in search strategies
- You can also apply the automated searching strategies to your most relevant/closely related patent references/citations
These procedures will continue to evolve in response to various factors like client requirements, project budgets, subject patent domains, etc. For example, basic searching will be incorporated and will play a significant role in telecom/wireless industry patents.
Prior Art Analysis and Mapping
It is critical to narrow down your bucket of short-listed citations to the ones that are closest to being available or identified. The citations are assessed with respect to each claim feature, and the citations that have most of the claim features are chosen from the bucket above the others in the domain.
The analyst’s next step is to extract the relevant text and provide it in a specific format as per the client’s requirements, which will provide a thorough/deep analysis of the closest citations. This can be done in one of two ways:
Summary Type Mapping
In this type of mapping, relevant excerpts from a relevant patent are provided. The relevant excerpts may also be highlighted in a specific color in accordance with the claim requirements. For example, the relevant text is in red bold, and the rest of the text is in black.
This also includes a searcher’s comment written in layman’s language. It provides a quick summary of what is and is not present in the mapped citation. This can also assist the client in determining whether the analyst inferred any equipment, keyword, etc.
Claim Chart Mapping
The claims are broken down into key elements in this format. This provides the relevant text for each key feature or key element of the claim. The text associated with a particular feature is highlighted in a different color, and this is true for all features. Furthermore, searcher comments are provided for all key features. This allows the client to thoroughly understand each key feature of the claim separately. Furthermore, this format is useful when we are using multiple references to invalidate a claim (s).
For example, using a combination of two references, the missing elements can be easily identified from the first reference. Further, the second reference covers those missing pieces that can be adjacently mapped to the first reference. Thus, providing a clear and high-level assessment to the client.
When the duration of the search/project is limited and the quantity of references to be presented to the client is on the higher end, the summary type format is preferable. While the claim chart format provides a high-level understanding of a specific reference, it also takes longer to complete than summary-type reports.