The Intellectual Property Rights as a legal regime has acquired a global significance with the advent of the WTO and the TRIPS agreement.The subject and practice of IPR is few centuries old in some countries but has acquired global standards in the recent decades and has further consolidated itself in the wake of the TRIPS agreement. Among the IPRs the Patent System in the modern sense can be traced back to the 19th century World Conventions on inventions especially the Paris Fair in 1878 leading to the conclusion of the Paris Convention in 1883. This in a way can be said as the forerunner to the TRIPS agreement of today.Today the Patent system can be heralded as the most comprehensive documentation of technological development around the world. Most importantly the system provides access to the technological progress for anyone to access it from any part of the world. Truly it is the first concept of 'Right to Information' as for as technology developments and details are concerned.
Prior art
Prior art is any body of knowledge that relates to your invention. Prior art would include previous patents, trade journal articles, publications (including data books and catalogs), public discussions, trade shows, or public use or sales anywhere in the world. A patent search is part of your search for prior art.
While there are many different grounds on which a patent can be invalidated, the most common one is that the invention is found to be not novel or obvious in the light of the prior art. As the claims are used to define the scope of protection granted by a patent, this can only occur if the patent's claims are not novel or obvious. So, to get a patent invalidated, the first step is to locate documents that can be considered "prior art" against the patent's claims. Prior art basically means any disclosure of the contents of a claim, prior to the application for patent. Prior art is any body of knowledge that relates to your invention.
The first step in patent examination is to search the available literature for documents that describe the invention in whole or in part. A restriction is made in this search: only documents published before the filing date of the application in question are considered. Patent practitioners call this "the state of the art". This restriction allows an inventor to publish his invention after he has filed a patent application on it, without destroying the novelty of his invention. Documents found in the search are often referred to as "prior art".
In all cases, examination of the patent application is carried out on the basis of the claims The evaluation of a prior art document thus must also be performed by comparing it to the claims. In this document the term "invention" should therefore be read as meaning "invention as defined in one of the independent claims of a patent or application".
A prior art document is said to anticipate a claim of a patent if the prior art document describes all the features of that claim, either implicitly or explicitly. The features of the claim must be present in the same composition in the prior art. The invention is then not novel over that prior art document. Such prior art documents are often referred to as "killer prior art", although patent attorneys discussing their own cases prefer the term "relevant prior art".
If a prior art document does not describe all the features of a claim, that claim is said to be novel compared to the document. The document can still be useful as prior art, but only to prove that the claimed invention is obvious. Usually, to establish that an invention is obvious, more than one prior art document is necessary.
Determining Prior Art Publication
While earlier patents and published patent applications are most often cited by patent offices, any document from any source can in fact be used as prior art. It does not matter
in which language the document is written, in how many copies it was made available, or whether any copies where in fact bought or read by third parties. The only thing that matters is that the document was available to the public before the critical date.
Publicly available material
Something counts as prior art only if it is available to the public. It is irrelevant whether the public in fact accessed the document, or how easy it was to find the document. For instance, a paper might be published in a journal with a very small circulation, or a book might be present in the library without being mentioned in the catalog. People might give lectures and distribute handouts at a conference that costs several thousand dollars per day to attend.
Publicly available products also count as prior art, even though it may be very difficult to determine exactly what the product is made of or how it works. If a device is put on the market before the patent application filed on a feature in that device, the feature is no longer novel. Usually, the sale or other disposal of the product is enough to make all its features prior art for later filed applications. If the product is not sold, but only demonstrated to the public, then only those features which the public could observe count as prior art.
The inventor might want to disclose his invention to a third party before filing a patent application, for example to evaluate the commercial value or to get help in developing a prototype. If such a disclosure is done in confidence, it does not count as prior art. While a written non-disclosure agreement (NDA), signed by both parties before the invention is disclosed, is probably the best way to go, it is by far not required. As long as the inventor can prove that the disclosure was confidential, it does not count as prior art. Of course with a written and signed NDA it is easy to prove this.
To determine whether something is prior art, the filing date of the patent application or patent in question is crucial. If the publication or disclosure was made before the day of filing, it counts as prior art.
A disclosure can also be implicitly confidential; that is, the recipient of the information should have known that this was confidential information. For example, when presenting your invention to a patent attorney it is not necessary to have him sign an NDA first.
Oral disclosures
Oral disclosures, such as lectures or non confidential discussions between the inventor and a third party, usually also count as prior art. The problem with oral disclosures is usually how to prove that they took place and what was disclosed exactly. In some cases a transcript or recording may be available. This can serve as evidence of what was orally disclosed, although establishing the date of the oral disclosure may still be difficult.
When is something prior art
To determine whether something is prior art, the filing date of the patent application or patent in question is crucial. If the publication or disclosure was made before the day of
filing, it counts as prior art. It doesn't matter how long before the day of filing the publication was made. It is important, however, that the publication date can be established with sufficient accuracy.
Internet publications
Internet publications are special case. As most patent offices perform their search and examination several months after filing of the application, a search on the Internet will not be of much use. In the intervening months pages on the Web may have been updated, added or removed, which makes it impossible to determine whether the invention was published on the Internet before the day of filing. But if it can be proven that a web page with particular contents was publicly accessible the day before the filing date, then that web page will count as prior art. A site such as The Internet Archive could be very useful in such cases.
Patent information management today is quite advanced thanks to the development of the internet and on line technologies and plays a crucial role in the success of the patent regime. It is of paramount importance that PIM (Patent Information Management) will set the agendafor organizations in terms of not only acquiring patents but also a starting point for new research
Emerging trends
Patent Search: A patent search involves searching different databases to see if your idea has already been patented, to know if you can patent your idea. The results of a good patent search should reveal any identical, similar, or partially similar inventions to the one you might patent. As a bonus, viewing and reading already issued patents will:
*help you to write your patent application
*help you understand your competition
*help you avoid patent infringement
*help you learn more about your field of invention
It is also a good idea to write down any patent assignees that you notice
listed in the patents you examine. They may be in the market to license patents in your field of invention - more about this later.
You have to do (or hire someone else to do) a patent search before investing in the cost of patenting. Even if you hire someone else to do the patent search for you and that is highly recommended for beginners - do a preliminary search yourself and bring that research to the intellectual property attorney or agent that you hire. Doing so will save you money, plus provide the other benefits mentioned above.
Dos and don'ts of search
1.Use an attorney, agent or independent research company when quality becomes more important. Keep your own search results and compare them to the professional search.
2.Professional searches can come with a formal written opinion or simply be copies of the prior art found in the search. Ask how the search will be done, what databases will be used.
3.Sign a non-disclosure agreement before hiring a professional. Watch out for invention scams.
4.Not every reference librarian in each PTDL library will be skilled in patent searching. Ask before you make an appointment.
5.Check classification numbers associated with each patent you examine. Go to the Manual of Classification to find out what the number/s state and then go to the Definition of Classifications to understand the invention. Some CD-ROM patent products and on-line databases Some common CD-ROM patent information products are listed below:
*CASSIS : Bibliographic information on US patents
*ESPACE - EP, WORLD : Full-text patent specifications of the EPO and PCT
*ACCESS : Bibliographic information on EPO and PCT patent applications
*BULLETIN : Bibliographic and status information on EPO patents
*IPC - CLASS : International Patent Classification search system Some of the more popular patent databases that provide on-line patent information searching are listed below:
*INPADOC Database: Listing of patents issued in more than 50 countries and patent granting organizations, giving information on the legal and family status of patents.
*IBM Patent Database: Listing of all US patents, including bibliographic data and specification of granted patents
*Derwent World Patents Index: Containing information for more than 14 million patent documents on all patentable technology. Period of coverage is from 1963 to-date.
*CA: Containing scientific papers and patents from advanced countries in the field of chemistry and chemical engineering. Period of coverage is from early 1960 to-date.
Patent information management today is quite advanced thanks to the development of the internet and on line technologies and plays a crucial role in the success of the patent regime. It is of paramount importance that PIM (Patent Information Management) will set the agenda for organizations in terms of not only acquiring patents but also a starting point for new research. Most importantly with PIM one can also avoid infringement as it could lead to cost litigations and damages to the companies. PIM plays a crucial role in the Prior Art understanding of which patent search is one part. Most importantly a professional PIM practice can also give leads to opportunities for licensing and acquiring new technologies which otherwise would not be visible to general market intelligence practice. In Indian context, it is crucial for SMEs to have an understanding which could lead to setting up of PIM unit in their organizations or can use the service of professional PIM services of firms to outsource their needs.
(The author is the faculty of National Academy ofLegal Studies & Research University Law, Hyderabad and Coordinator of NC Banerjee Centre for IP law studies at NALSAR.)