Prior Art: What you need to know

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Prior art is commonly defined as any evidence which discloses your invention as already known. A product known to exist in the marketplace before yours in an obvious example, but any public knowledge which discloses your invention (other patents, products, published literature, public demonstrations, etc.), anywhere in the world, can be considered prior art. According to the EPO, it is estimated that for each recorded invention that reaches the market, ten inventions will not[1]. In order to properly qualify the patentability and novelty of your invention, it is necessary to conduct the broadest prior art search possible, including high-yield search databases. To find out more about search databases click here.

Two components vital to any proper prior art search are product searches and patent searches. A quality product search will include keywords that clearly describe what your invention does, as well as a search of existing products which may solve similar needs and problems. It is also important to carry out a competing art search – this can reveal products that are very different from your invention but satisfy the same need. With regard to patent searches, it is imperative that you find every patent document relevant to your invention that you possibly can, using every resource at your disposal – the validity or issuance of your patent depends on it.

Want to learn more about patent searches? We can help! Download our patent search guide today.

 

[1] European Patent Office

What to Expect in your International Search Report and Written Opinion

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The International Search Report and Written Opinion of the International Searching Authority (ISR) is a document provided by the International Searching Authority (ISA) in connection with a PCT patent application. Typically, the ISR is issued a few months after the International Filing Date, but there can be quite a significant difference depending on what ISA you select. The ISR gives applicants an idea of what prior art is out there and what issues and rejections may arise once the application has entered the national/regional stage. Applicants can then formulate their foreign filing strategies accordingly and place the application in the condition for allowance.

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The Benefits of the Supplemental Search Report

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After filing your PCT application, an International Searching Authority (ISA) will perform a search of relevant patent documents and references. Additionally, the ISA will issue a preliminary and non-binding review of the claims, analyzing them to see if they satisfy novelty, inventive step and industrial applicability standards. The International Search Report and Written Opinion are sent out approximately 4 months after the PCT filing date (16 months after

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the priority date).

If desired, the applicant can request further international searches from one or more ISAs which have indicated their availability to perform supplemental searches. There are two fees for requesting the supplemental search – a search fee set by the ISA performing the additional search and a CHF 200 search handling fee to the International Bureau. Usually, this request is submitted after the applicant has received the International Search Report, but no later than 19 months after the priority date. The Supplemental International Search Report usually issues 28 months after the priority date, right at the time when the applicant is deciding where the application will enter the national stage.

The benefit of requesting a supplemental international search is pretty obvious. Having additional sets of eyes searching the prior art base means reducing the chances of any unanticipated prior art popping up during examination. Since foreign filings can be quite expensive, having a complete picture of the prior art and one’s likelihood to receive a patent can help an applicant formulate their strategy before entering the national stage.

 

The Benefits of the Supplemental Search Report

No comments yet

After filing your PCT application, an International Searching Authority (ISA) will perform a search of relevant patent documents and references. Additionally, the ISA will issue a preliminary and non-binding review of the claims, analyzing them to see if they satisfy novelty, inventive step and industrial applicability standards. The International Search Report and Written Opinion are sent out approximately 4 months after the PCT filing date (16 months after the priority date). 

If desired, the applicant can request further international searches from one or more ISAs which have indicated their availability to perform supplemental searches. There are two fees for requesting the supplemental search – a search fee set by the ISA performing the additional search and a CHF 200 search handling fee to the International Bureau. Usually, this request is submitted after the applicant has received the International Search Report, but no later than 19 months after the priority date. The Supplemental International Search Report usually issues 28 months after the priority date, right at the time when the applicant is deciding where the application will enter the national stage.

The benefit of requesting a supplemental international search is pretty obvious. Having additional sets of eyes searching the prior art base means reducing the chances of any unanticipated prior art popping up during examination. Since foreign filings can be quite expensive, having a complete picture of the prior art and one’s likelihood to receive a patent can help an applicant formulate their strategy before entering the national stage.