Patenting an idea: importance of a prior art search

If you wish to protect an idea, there are certain important things that you must know before filing a patent. How can your idea qualify as an invention? First, you cannot patent a mere idea as an idea is usually theoretical in nature. Many people have great ideas, but cannot obtain patents for them as they are not inventions.

An invention must fulfil certain patentability criteria, which can vary across jurisdictions. In general, the term 'invention' means a unique product or process. The invention must:

• be novel – it must have at least one feature which is not present in single prior art;
• be non-obvious – it must have at least one feature which is novel and should not be obvious to a person skilled in the field of the invention in view of a combination of multiple prior arts or a single prior art and common general knowledge; and
• have industrial application – most jurisdictions proscribe patenting in certain areas (eg, scientific theory, new animal or plant varieties, methods of treatment, algorithms, mathematical formulas, business methods and software).

The process of obtaining a patent can be expensive as a number of fees must be paid (eg, a filing fee, an examination fee and attorney fees). While discounted official fees apply to individual inventors and small enterprises in most jurisdictions, the overall cost of protecting the invention can be high, particularly if the inventor wishes to protect his or her invention in multiple jurisdictions.

It is generally advisable to carry out a prior art search yourself or engage a professional to do so before beginning the patenting process. Based on the findings of the prior art search, the novel and inventive features of the invention can be identified clearly, and a decision can be made regarding in which jurisdictions to file. There are multiple advantages of conducting a prior art search:

• It can avoid wasting money and resources in patent filings and prosecution proceedings if the invention is not unique, allowing R&D centres to use their IP budgets wisely.
• The prior art search helps to identify the closest prior arts and thus can define the scope of protection in patent claims. This can even lead to a reduction in the prosecution time due to the need for fewer office actions and claim amendments. The prior art search is like a due diligence exercise that can reduce the risk of rejection of the patent application.

In order to conduct a prior art search, it must first be understood what can act as prior art against the patent application. Prior art is any publicly available evidence that proves that an invention is already known or obvious. Any granted patent, published patent application, article, research paper, web page, book or video can be potential prior art for the patent application. The prior art search is simple and can be carried out by anyone. Sometimes an inventor may not be as familiar with the prior art search process as a professional searcher; however, there are many patent databases and search engines for novice users.

A typical prior art search process requires a search strategy to be formulated at the beginning using a keyword search, name search, classification search or a citation search, or a combination thereof. In the keyword search, all of the key features of the invention are identified and then keywords and their contextual synonyms are ascertained from the key features of the invention to formulate search strings to be run on patent and non-patent databases. In addition, patent classes, applicants and inventors relevant to the field of invention may be identified and used in the search strings to refine the search strategy. All of the search results must be manually analysed to shortlist the most relevant prior arts. For this purpose, only the title and abstract of the search results can be read for the first level of screening, and then other sections of the search results can be seen at the second level of screening, if required. Once most of the relevant prior arts have been shortlisted, their citations can be checked to discover more results around the shortlisted ones.

It is always better to try several search strings to ensure that all permutations and combinations are covered. However, a prior art search can never be complete. It can never be said with certainty that no prior art exists as the search requires skills, training and practice. Nevertheless, an inventor should attempt to carry out a comprehensive prior art search in order to minimise the risk of rejection of the patent application or invalidation of the granted patent at a later stage.