Performing a patent search can be a very time-consuming and frustrating process. But there are three main obstacles that can make it even more challenging. These are judicial exceptions, international treaties, and prior art.
Prior art search
Performing a thorough prior art search is essential to determine the patentability of an invention. This is because the United States only grants patents for inventions that are non-obvious. It is also necessary to determine if your product will infringe on existing patents and trade marks.
Prior art is a broad term encompassing many different types of sources. These sources include published patent applications, issued patents, and scientific and technical books. It can also include remote trade publications and journals. It may also include information disclosed in oral form.
Prior art is considered by the USPTO as part of the granting process for patents. It is also used by the courts in invalidity proceedings. It can be useful in opposition proceedings as well. In addition, it can be used to reject later-filed patent applications. In some cases, it can be used to prevent competitors from entering the market. Using a thorough prior art search can save you time and money when filing a patent application.
A good search includes all sources in the field of art. These sources include published patent applications, issued and unpublished patents, and scientific and technical books. You should also consider the type of problem you are trying to solve. For example, if you are trying to develop a new chemical or pharmaceutical, you may want to conduct a technical prior art search. You may need to go back as far as twenty-five years to find the appropriate prior art.
The cost of conducting a prior art search depends on the value of the invention, the time frame, and the resources you have available. If you are just looking for information, you might use a general text-based search. If you have a lot of money, you might be willing to spend more money on a comprehensive search. For example, a large pharmaceutical company would have to spend more on a research project than a single inventor would. Depending on your goals, you will need to choose the best method to achieve your objectives.
During a patent infringement trial, a defendant may be able to use a prior art search to show that the accused product is not infringing on an invention. Similarly, it can be used in a USPTO action as part of a substantial examination. However, it is important to remember that a positive patent search opinion does not guarantee that the original claims will be granted. In fact, it is possible that the examiner will reject your application without prior art references. In other words, if you are searching for prior art as a defendant, the cost of the search may be irrelevant.
The best way to complete a thorough prior art search is to consider as many different sources as possible. It is important to include as many sources as you can because each source will have its own unique characteristics.
Performing an efficient patent search is no easy feat. Fortunately, there are tools in place to help. One such tool is the LexisNexis TotalPatentOne(r) patent search platform. The LexisNexis patent database is massive, containing 70 terabytes of information. The software is designed to help patent practitioners find the most relevant patents and technologies in the most effective manner. Using the patent database, users can obtain simultaneous access to patents from around the globe. Unlike the aforementioned tools, the company’s patent search platform is free of charge. This means that users can make the most of their research and development time. The aforementioned software is also user friendly, boasting an uncluttered user interface. For the aforementioned reason, the LexisNexis TotalPatentOne(r) is an ideal partner for any patent professional. Whether you are searching for a patent in the United States or abroad, the LexisNexis patent search platform can help make the most of your research and development time. Moreover, the software comes with a comprehensive training manual, allowing users to quickly become familiar with the most effective way to conduct a patent search. With the aforementioned knowledge, you are on the way to a patent search you’ll be proud of. Lastly, the LexisNexis patent search software can be incorporated into your existing database for seamless integration.
Several Supreme Court decisions have laid out a framework for efficient patent searches. These decisions are designed to help examiners find and assess eligible claims. Whether you are a first-time examiner, a veteran, or a seasoned vet, you will be able to quickly and effectively assess the eligibility of your claims.
The first step is to identify the judicial exception that your claim recitees. In many cases, the judicial exception is not the only thing in your claim that deserves to be examined. Moreover, you must also make sure that the other parts of your claim support the inventive concept you are seeking.
For example, the claim might recite a natural correlation between a patient’s blood glucose level and his or her risk of ketoacidosis. It might also recite an insulin-lowering effect. In either case, it should be noted that the patent-eligible subject matter must qualify as a patent-eligible invention.
Alternatively, the claim might recite a mathematical formula that is novel. The court will consider this a patent-eligible discovery if it is integrated with other components to provide a patent-eligible invention. If not, it should not be treated as the judicial exception itself.
The patent-eligible invention must also be an improvement over existing technology. For example, a medical condition may be treated by using a plasmapheresis device, but this would not be considered an improvement in the usual sense. It is more appropriate to describe this as an improvement to computer functionality.
To be eligible for the Step 2A Prong One, the judicial exception must be identified and then evaluated to see if the claim contains the appropriate elements. The Court found that a teeter-totter claim that uses the law of the lever and mechanical advantage was a better candidate for the Step 2A prong than a similar claim that did not use the law of the lever. Similarly, a machine claim with the F=ma formula as an example is a good candidate for the Step 2A Prong One.
The second step is to evaluate the claim as a whole to determine if it can integrate the selected judicial exception into a practical application. This is not as straightforward as the teeter-totter example, but it is still a worthwhile analysis. For example, a claim that recitees an insulin-lowering effect without reciting a mathematical formula cannot be considered a judicial exception, even if the mathematical formula is a novelty.
Finally, to be eligible for the Step 2A Prong Two, the judicial exception must be incorporated into the claim. For example, a teeter-totter might be an example of a judicial exception because it does not recite natural principles. However, it does not integrate that idea into a practical application. On the other hand, an insulin-lowering effect that is integrated into a teeter-totter could be a judicial exception.