Patent Hawk - Prior Art Search

A patent supposedly claims a novel and useful innovation. To qualify as novel, the solution a patent claims must not have been obvious to one skilled in the art of the particular technology at the time of filing the patent application. Title 35 U.S. Code §102-103 state the legal conditions for patentability, particularly with regard to prior art.

A claim is novel only if it is not anticipated by, or obvious in light of, prior art. Prior art spans the globe - all of human endeavor prior to the patent application. If the prospect of knowing the prior art sounds daunting, that's because it is - hence the need for a professional prior art searcher.

Prior art search is the bread-and-butter Patent Hawk service. We have easily done over a thousand searches.

35 U.S.C. § 103(a), the obviousness clause, was interpreted by the Supreme Court in its April 30, 2007 decision in KSR v. Teleflex. The Court ruled:

The Court thus found incremental improvements the product of common sense, not worthy of patent protection. Further, the statutory term "ordinary skill in the art" was interpreted to mean someone omnificent, knowing all prior art, and quite creative; quite a divorce from reality.

In doing so, the Court substantially raised the bar for patent validity, turning the clock back to the 1970s, when the vast majority of asserted patents were found invalid in the wake of an Supreme Court rulings in the 1960s.

The effect of KSR needs to be appreciated in context: what used to be conventional wisdom for amassing a patent portfolio has now become a domino set of invalidity. Historically, companies patented incremental improvements to the prior art, citing prior art, itself incremental improvement; creating a legacy of the patent damned, reaching back to legally expired patents. Genus patents, that is, patents of significant originality, are quite rare. Even the most hard-won patents, for famous historical example, those of the cotton gin, from the 1840s, would be obvious under the KSR regime.

The upshot is that comprehending the prior art has become more important than ever. Many new ideas, once patentable, are no longer so. Many existing patents are a domino series of incremental improvements, such that understanding the prior art topples all of the patents in the series; whole lines of patents in related technologies are no longer enforceable.

The sources of prior art include patents, periodicals, books, and products. Different prior art sources have different values and require different efforts. Patents are the most consistent story-teller of prior art. Periodicals tend to be piecemeal, but can be very on-point. Books are sometimes useful, but are often too general to be more than supportive. Products can be great prior art, particularly as defensive art in litigation, but finding sufficient technical details about some product types, such as old software or electronic products, can be time-consuming.

Patents are readily searched, as comprehensive libraries of patents exist. Patent Hawk uses Thomson-Delphion IP research, which offers worldwide patent search, various patent analyses methods, and non-patent prior art sources as well, such as the complete collection of IBM Technical Disclosure Bulletins. As a best practices reminder, Patent Hawk created a customized help file for Delphion patent search. For prior art searches, Patent Hawk makes Delphion sing.

The primary skill to efficient patent searching is using keywords that narrow the search without eliminating candidate prior art. To be efficiently effective, a prior art searcher must be knowledgeable with the terminology used in the technical field. Other techniques in patent searching include patent cluster analysis using keywords and patent class/subclass, and backward tracing of forward references.

Efficient periodical search requires ready access to the most likely sources of relevant material. Patent Hawk has a database of periodicals to help select the most likely sources, ready access to numerous online libraries, and intimate familiarity with local libraries.

Sometimes helpful, particularly in litigation, books are readily found through online search. Patent Hawk is familiar with several online technical book stores besides the behemoth Amazon, and often relies upon the wonderful local Powell's Technical Books.

A first step in uncovering prior art products is searching periodicals for relevant articles or advertisements. InfoTrac has an excellent database for computer product articles. If the actual product or manuals are needed, the follow-on technique is contacting the manufacturer, distributors, product reviewers, specialty shop owners, and/or collectors.

It's smart to search the prior art before filing a patent application. Knowing prior art can inspire further innovation, extending the scope of possible claims, even leading to further invention.

There are at least four reasons to consider a prior art search mandatory prior to filing an application:

1. File claims knowingly over the prior art: not blind to the prior art, not subject to examiner action regarding prior art. If you don’t know the prior art, you cannot possibly draft novel claims, know the appropriate claim scope, or reasonably hope that the drafted claims are valid.

2. Proactively explain the prior art to the examiner, so that the examiner grants claims rather than an office action. Increase the odds that your claims are granted straight-away, without frivolous action and the expense of a tedious reply to office action.

3. Companies often patent for defensive reasons, thinking that a patent amounts to clearance to employ a technology. A quick prior art search may reveal otherwise, or provide assurance.

4. Knowing the prior art facilitates later enforcement. Owing at least to time constraints, Examiners often fail to find the best prior art. Knowing that the best prior art has already been overcome during examination strengthens a patent, and lessens the potential for later re-examination.

It can be difficult to know contemporaneous efforts at the time of filing. Publication of patent applications lag by at least six to eighteen months, and not all applications are published. Many technology areas have times where there are flurries of innovation. The first waves of patent filings for Internet software technologies were from 1993 through 1998, for example.

One tactic is to file a provisional application after a preliminary search for older prior art, wait six to nine months, then search again for more contemporaneous art at the time of filing. The advantage to this prudence is that filing a provisional application is cheap relative to filing a non-provisional application that has claims.

Patent Hawk provides low-budget, high-yield prior art searches - ideal for patent prosecution. Suggested budget: $600. Searches are often completed under-budget.

Platinum Patents helps inventors get patents. If you an inventor, please see our Platinum Patents web site.

Conflict searches are custom prior art searches for attorneys involved in defensive legal measures, such as preparation of a clearing opinion.

In recent years, reexamination is increasingly used as an avenue to invalidate a patent in light of prior art not known or appreciated at the time of examination. Patent Hawk can provide the best art for petitioning for reexamination, as well as charting the prior art to claims, to clearly elucidate how the prior art invalidates.

Litigation searches are always done by a defendant as a means to invalidate patents against which the defendant is accused of infringing. Effective searches are mandatory. Patent Hawk has extensive experience working as part of a patent litigation team, assisting with prior art search, invalidity and non-infringement analysis, claim construction, and briefs regarding technical issues.

A diligent law firm representing a plaintiff hires a professional prior art searcher before filing an infringement lawsuit, to ensure that the patent is enforceable as valid over prior art. In this case, it is prudent to have an outside consultant prior art searcher, to serve as a buffer with regard to the litigation discovery process. Patent Hawk maintains discretion with on-point feedback.

Patent Hawk is a boutique search service, self-limiting to areas of sufficient expertise to bring maximum value to its clientele. Patent Hawk search specializes in the following technology areas:

Here is an incomplete listing of Patent Hawk prior art sources.

Patent Hawk prior art searches are $160 per hour, often done within a budget limit. And done as quickly and efficiently as possible.