Importance of a Patent Search and Analysis by Patent Attorney
The best way to determine whether an invention is patentable is to have a patent search completed with the results of the patent search analyzed by a patent attorney. The searching uncovers prior art that is publicly available. The question then is, “what is prior art?”
We need to first determine what is prior art, which is the term given to information (patents, periodical articles, newspaper articles, brochures, actual goods) that has been publicly disclosed prior to the filing date of the patent. It is this entire body of work that forms the backdrop of the analysis of novelty and nonobviousness of an invention.
Essentially prior art answers the question of what was already invented prior to the invention that has been submitted or the invention that has been discovered. Has the invention already been invented by someone else in the world? Is the invention, while new to the inventor, actually something that was invented many years ago by someone else? The answer to this question is found in the prior art. That is, if reliable and acceptable documentation can be found that someone else in the world already invented the invention, then the invention is not entitled to a patent.
Consequently, prior art encompasses everything that came before. Prior art is not limited to other United States patents, but includes virtually any publicly available information including patents and published patent application from any country in the world, academic papers and publications, trade and specialty journals and magazines, on line resources, brochures, sales material, and actual physical specimens. Such prior art can be in any language, and does not have borders.
You can think of prior art as being the entire body of knowledge in a field prior to the invention. A prior publication that is publicly available can be from anywhere in the world qualifies as prior art. For example, a published magazine article in Belize, a patent issued in Guyana, a review of a device sold in the Philippines, a device used in the United States.
This is an overwhelming amount of data, that, if one was to exhaustively search the entirety of the prior art, would be cost prohibitive. Imagine having a search firm search worldwide patents (including patents in countries where there is no on-line access), searching worldwide libraries and universities could cost in excess of six figures.
Typically, a patent search prior to the filing of a patent application, a preliminary patent search can be done at a relative reasonable cost. Such a preliminary search generally involves the searching of issued United States patents, published United States patent applications, and publication and/or Internet based searches. In other instances, these can likewise include worldwide on-line patent searches.
While this search is not exhaustive, it does provide a set of results that are helpful, while being mindful of budgeting. Typically, these are completed by a professional searcher. When the results are received, a patent attorney can review the results to provide an opinion as to the patentability of an invention.