Patent Searching: How to Find Out if You Really Invented Something

October 17, 2023

Insights Intellectual Property

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. 

Facilitating the Patent Process as an Inventor

As an inventor, there are a few things that will help you help a patent professional draft the best patent for your invention:

  • During the R&D process, carefully maintain all records and documents relating to the project.  This includes informal notes, sketches, emails, and other information.  This could be valuable at a later stage, especially if the patent is ever challenged.
  • Conduct an initial search for similar inventions.  A simple keyword search on Google and other web search engines can readily reveal similar products.  Several patent offices have user-friendly on-line searching functions.  The websites maintained by the USPTO, European Patent Office (in particular its “Espacenet” site), Google Patents and the World Intellectual Property Organization (WIPO) are good places to commence such a search.  Note that your preliminary search should be conducted only to obtain an overview of the prior art; it is not a substitute for a thorough search conducted by a professional patent searcher.
  • Maintain a file of all “prior art” that is relevant to the invention.  While there is no legal requirement in any jurisdiction to conduct any literature or patent searches, some jurisdictions (notably the United States) require complete disclosure of any relevant prior art known to the inventors and the patent applicant.  
  • Prepare a detailed description of your invention.  This should include a variety of drawings, if appropriate to the invention.  The description need not be in any special form but should be as detailed as reasonably possible.  The more detail that can be provided to the patent professional, the more thorough the prior art search (which can predict potential objections from a patent examiner) and the better the resulting patent. 
  • Outside of patent searching, it is often wise for you to consider variations on your invention (alternative embodiments), so as to potentially broaden the scope of your invention.

Professional Prior Art Search

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.


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PCT Prior Art Search Report

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.

Conclusion

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.

Explore other articles in this series

Three people stare at a laptop with a Vector logo on it

Intellectual Property and Generative AI: Many Questions, Few Answers

Ownership of IP: Do You Own Your Invention?


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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.

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