Many enterprises begin with substantial investments directed toward developing inventions that will reap significant profits in the future. Frequently, competitors who have not invested comparable resources may copy the inventions with relatively little effort. Accordingly, the inventing enterprises often seek protection in the form of patents, which allow the enterprises to enforce a temporary monopoly relating to the inventions.
An applicant for a patent does not receive the patent until the patent application passes the thorough examination process of a jurisdiction's patent office, for example, the United States Patent and Trademark Office. An application may be rejected for any of a variety of reasons, for example, the invention as described in the claims is not “novel” (that is, the claimed invention already exists) or it is novel but it is “obvious” (for example, no special ingenuity caused the invention or there is no unexpected advantage associated with the invention). To reject a claim as lacking novelty or as obvious, the patent examiner must justify the rejection in a communication called an “office action.” The office action must include a search report in which the “prior art,” is referenced, that is, the document of the technology upon which the lack of novelty or non-obviousness rejection is based. Prior art may be issued patents of any country, published applications of any jurisdiction, non-patent documents (for example, a technical journal), public demonstrations, internet web pages, et cetera. In order to draft a search report the examiner must conduct a prior art search. In order to conduct a prior art search the examiner must use search engines. Different Search engines can be used. Some search engines have additional functionality of enabling the marking of documents and further export the marked documents. One such search engine is that provided by the European Patent Office (EPO). (See “My patents list” at http://worldwide.espacenet.com.)
Patent examiners are not the only searchers that conduct the prior art search. Although an applicant often has the opportunity to amend the claims to overcome the rejection, for example, to describe a feature of the invention that is not disclosed or even suggested in the prior art, the resulting patent is potentially stronger legally if the claims were originally in condition for allowance when the application was filed. Even though most patent applications are rejected at least once during examination, the resulting patent can be expected to fare better after the patent grant if the claim amendments during examination were more of a minimal nature.
Accordingly, patent attorneys regularly advise their clients to conduct prior art searches to enable the patent attorneys to draft better claims. Additionally, a prior art search may find documentation so close to a client's invention that very little claim scope would likely result from a subsequently issued patent. As unwelcome as such news is received by the client, it is preferable to be informed of the state of the art before substantial investment is made attempting to patent an invention and promoting the invention for the market. In another scenario, a “portion” of an invention is found in a prior art search, so the client and attorney work together to focus efforts on the part of the invention that has not been found. Such effort is also better invested early and before filing the patent application.
A proper prior art search is difficult to perform for someone without the proper skills and tools. A skilled searcher can find highly relevant prior art that an inexperienced searcher may never notice. As a result of the importance of a proper prior art search, specialized services have developed over the years which employ skilled searchers and equip them with the proper tools, such as access to both public and private prior art databases. Numerous algorithms are available to assist the searcher, and improved algorithms are continually being developed.
After the searcher determines which prior art to provide to the applicant, the searcher must present it in a fashion that easily directs the applicant's attention to the appropriate areas. For example, the most relevant part of a twenty page document may be five lines of text on the sixteenth page. Various applications for efficiently generating search records are also continually being developed.
Prior art searches are useful in other situations besides helping one decide whether to file a patent application and, if so, how to prepare it. For example, a party accused of patent infringement or assessing the risk of such accusation wants to know of prior art that may be applied to invalidate claims of the patent. In some limited situations, for an application for patent that is still pending, a party adverse to the grant of the patent may submit material prior art to a jurisdiction's patent office in the hopes that the patent office will reject the claims based on the submission.
It thus would be highly beneficial to equip a prior art searcher with efficient tools that enable him/her to quickly find the prior art that is most relevant (material) to a specific need.