Patent Searching: How to Find Out if You Really Invented Something
October 17, 2023
October 17, 2023
In celebration of Small Business Month, Vector in collaboration with Smart & Biggar LLP, developed a series exploring the dynamic relationship between AI and IP. In this series, designed to help support Canadian startups and research professionals, Vector dives into how AI innovation intersects with intellectual property, discussing trends, challenges, and strategies that shape this ever-evolving landscape.
In order to be protected by most patent systems, the invention you submit must be “novel” or new. That is, it must not have been previously disclosed to the public, whether by the inventor or any other person.
A “public disclosure” of an invention can arise by any disclosure that even hypothetically permits another person to determine the invention, if that person was not bound by any obligation of confidentiality. For example, a public disclosure can arise from the existence of a publication in print or on-line, or through the sale or marketing of a product or even (in some cases) testing a product in a public space. In some cases, an invention can be disclosed by showing it in a trade show or other public exhibition, showing it to potential customers, or publishing or posting marketing literature which discloses even part of the invention.
Any of these disclosures, if made prior to filing a patent application, can result in the invention not being patentable in some jurisdictions.
As an inventor, there are a few things that will help you help a patent professional draft the best patent for your invention:
A prior art search is an investigation conducted to identify any publicly available information that might be relevant to an invention’s novelty or obviousness. Prior art includes awarded patents (including expired ones), published patent applications, scientific articles, technical papers, public presentations, existing products and product manuals, and any other publicly accessible information, in any language. Prior art from anywhere in the world can be used to invalidate a patent.
The first step in a prior art search is to clearly define the scope of the invention being searched. Patent attorneys or researchers work closely with the inventors to understand the technical features and unique aspects of the invention.
Patent searchers then use specialized databases and search engines to access a vast repository of patent documents, scientific literature, and technical publications. These databases include international patent databases, patent offices’ websites, academic databases, and industry-specific repositories.
The searchers use relevant keywords and classification codes related to the invention to narrow down the search results. The searchers review the patent documents that are relevant to the invention to understand the existing state of the art and the technological advancements made by others in the field.
Apart from patents, the searchers can analyze scientific journals, conference proceedings, technical papers, and other non-patent literature to identify any relevant prior art that might not be found in patent databases. The searchers document all the relevant prior art found during the search process. This documentation includes citation details, summaries of the relevant documents, and notes on their relevance to the invention. The results of the prior art search are presented to the inventors or patent applicants in the form of a prior art search report. This report highlights the key findings and the relevance of the identified prior art to the patentability of the invention.
In the world of AI and machine learning, IP is a critical asset. Stay ahead of the competition by making IP an integral part of your business strategy.
The PCT (Patent Cooperation Treaty) allows an applicant to file a single application in an international receiving office and designate all member countries of the PCT (currently 157 member countries). For most countries, 30-months after filing the international PCT application it must be separated into individual national applications for each designated country in which protection is sought. The PCT effectively provides an international patent filing system. A PCT application will not result in an international or “worldwide” patent.
If you decide to file a PCT application instead of a non-provisional application with a single office, your patent will get a PCT International Search and Preliminary Examination, which includes a prior art search and informal written opinion. The search and written opinion may be used by the applicant and patent counsel to assess the likelihood of obtaining a patent when it is time to separate the international application into respective national applications. If desired, preliminary international examination may be requested at which time the applicant will have the opportunity to enter into a dialogue with an international examining authority, and to amend the application and submit arguments in favour of the patentability of the invention, similar to the prosecution of a national application.
Prior art searches are a complicated process best left to professional searchers. Many of the things that you can do as an inventor to help this process is good practice for the patenting process in general, and is highly recommended. Most importantly, do not publicly disclose your own invention! This can have serious consequences for the patentability of your work, and in turn the ability to commercialize.
IP is a key business asset, especially in AI and machine learning. To gain a competitive edge, prioritize integrating IP into your business plans, including strategies for commercialization and monetization.