This post was first published on 14th March, 2011.
The process of filing a patent involves two important steps before the application forms are prepared. The first step is prior art search and the second step is drafting of the patent specification. Many a time, companies and inventors question the value of a prior art search before filing the patent. While some companies perform comprehensive prior art searches before drafting patent specifications, others do not carry out any search at all. Both the approaches have advantages and disadvantages.
Advantages
The main advantages of performing a patent search before drafting are:
a. Opinion on patentability;
b. Claim scope modification; and
c. Differentiation from prior art.
b. Claim scope modification; and
c. Differentiation from prior art.
a. Patentability Opinion
Performing a prior art search enables a person to frame an opinion on patentability of the invention in question. Novelty and Non-obviousness of an invention can be assessed based on prior art search results. Decision on filing the patent application can be made based on patentability of the invention. It is estimated that Forty to sixty percent of inventions disclosed in a company are not taken for drafting and based on prior art searches. So, a prior art search and patentability opinion based on the same can help a company to save costs on filing non-patentable patent applications.
b. Claim scope modification
Review of prior art with respect to an invention generally gives the inventor an understanding of the multiple applications of his invention. Review of claims of similar inventions, applications of related inventions in different fields and so on can provide necessary inputs to the inventor to expand the scope of his patent claims. With appropriate support from his patent attorney, the invention can be drafted in the broadest possible manner based on prior art review.
c. Differentiation from prior art
Prior art search enables the drafter to differentiate the invention from the prior art in the most effective manner. Citing pre-existing prior art in the background and differentiating the invention from the prior art will enable satisfaction of novelty and non-obviousness of the invention with ease. This will reduce the prosecution time and enhance the chances of a patent grant.
Disadvantages
Having said that, prior art searching has certain disadvantages as well. Citing of references may have a negative impact on prosecution of the patent application and may increase the number of objections. Accepting existence of patents and citing such patents may help third parties holding such patents to prove infringement and gain punitive damages. Furthermore, prior art searches are time consuming and may delay the patent filing, which may result in loss of priority. Moreover, prior art searches may not be required if a company is working on cutting edge technologies and knows everything about developments in the field.
Despite the value of prior art searches, the decision to search is a strategic one and varies from company to company. Many Indian companies have off late started training their inventors on prior art searches to improve the quality of invention disclosures and to speeden the patent filing process.
Authored by Dr. Kalyan C Kankanala
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Parimal KOWTAL
Prior art search helps in drafting the Patent Specifications.