Tracking down the prior art that matters
Let’s talk about how you figure out what is the closest prior art to your invention. Prior art can be products that are out there in use on the market. It can be descriptions of things that have been published in various forms. It can also be in the form of patents—patents that exist going back to the very beginning of the patent system. Even what they call patent application publications, which aren’t patents but they’ve been published by the patent office, can be considered prior art. The point is, there’s a variety of places that you can look for prior art.
Now, in the very beginning of the patent process, you should always start looking yourself for prior art. And the places you would look yourself are the places where you would commonly search if you were looking for your product to buy it. So, you’d probably search the internet for similar products, and you’d search in stores and in catalogs, places like that—places where you think it would be likely that you’d find the product.
We’re going to assume that you’ve already searched in the marketplace, and you haven’t found anything that’s similar to your idea. Next comes the patent search. When searching through existing patents, it’s not so easy to find the closest prior art. Patents, even from the beginning of the patent system, can be relevant to the patentability of your invention. Searching for the closest patents to your invention can be a really complex process. There are some resources available on the internet that help you find some of the patents that might be close in your field, or close to your invention. But sometimes, these online patent searches will give you a false sense of security.
Sometimes they’ll show you a few patents, which give you just enough information to have you believe that you’ve found the closest prior art; but the truth is there’ll be something closer—something that would get in the way of your getting a patent, or something that would change the approach or the way in which you apply for a patent, if you only knew about it. The problem is that the various resources that you can get to through the internet are not really set up to find you the best prior art.
Here’s why: How do you typically search for things on the internet? You use words, of course. You put in words that you think are probably going to describe a website that you’re looking for. If you’re looking for a burger joint, let’s say, you type in something like “hamburger” and “restaurant.” And the search results you get show a lot of websites that use those words, “hamburger” and “restaurant.” But now, when it comes to an invention—and in particular patented inventions—there’s a lot of different terminology that might have been used to describing inventions similar to yours.
Imagine that you have an idea for a can opener that has a special type of handle. So you go to an online patent database, and you type in the words “can” and “opener.” In some of these patent databases, you might come up with a whole bunch of can openers. And you might look through that list and see that there’s nothing there that’s just like your invention. So you may think, “Hey, there is a big difference between my invention and the prior art, so I can go ahead and apply for a patent.”
The problem is: what if someone had a can opener that had that same type of handle as yours, but they didn’t call it a “can opener”? They called it a “container opener.” Or they called it a “device for opening metal containers.” It wouldn’t appear in the search results that you got. This is one of the main reasons why even professionals who try to do patent searches on the internet don’t really get effective search results—results they can rely on when deciding to move forward with a patent application.
The most effective way to search for prior art is to do what’s called a classification search at the United States Patent and Trademark Office (USPTO). In a classification search, we’re not looking for things by words, but we’re looking for them based on the category of technology that they fit in, according to the patent office’s own classification system. In a classification search for a can opener, even if another inventor called it something else, it will be in the right category at the patent office. An appropriate classification search uses the patent office’s own facilities to locate the closest prior art.
So when you do your research, check likely places in the marketplace first—stores, catalogs, online searches for the product. If you find it, or something very close to your idea, already for sale somewhere, you’ve just saved yourself the cost and frustration of applying for a patent you wouldn’t get. But if you get to the point where you’ve looked and looked, and you still haven’t found it? You absolutely want to have the right type of professional research done—including a classification search at the USPTO— before you jump into the patent process.
In part 5 of this series, we’ll discuss the patent process itself in more detail.
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