Searching perfect prior art for a patent is an art. A prior art that can invalidate an issued patent or render a patent application not novel is what every prior art searcher aims to find. Searching for prior art not only requires knowledge of the claimed technology but also skill – skill to frame effective search strategies and queries, select resourceful search avenues and execute search to identify the most relevant prior art.
Patent databases are the first choice of prior art searchers worldwide. But when traditional searches in patent databases fail to uncover prior art, skilled prior art searchers look to unconventional resources such as non-patent literature (NPL) which are often found to be effective tools.
A survey published by the IAM Magazine in 2015 showed that the European Patent Office (EPO) outranked USPTO in quality of patents granted. Research performed by Colleen Chien of Santa Clara University of Law validated this survey and suggested a reason for EPO’s high score could be attributed to its examiners relying more on non-patent literature compared to examiners at the USPTO who seem to rely more on patented literature.
Non-patent literature (NPL) searching is an essential part of the prior art search process. In particular, search platforms that provide access to patents along with critical non-patent sources, like journal articles, newsletters and dissertations, in a single interface are valuable. Searches pertaining to chemical molecules are extensively performed using platforms like STN which includes databases such as Derwent World Patents Index®, CAS databases, Embase®, BIOSIS®, SciSearch®, MEDLINE®, Compendex, INSPEC® and more. Niche databases covering newsletters, dissertations, and business news articles are also included. In addition to traditional scientific publication sources such as ScienceDirect, INSPEC, IEEE Conference Proceedings, ACM Publications, and SPIE databases, effective and curated searches through unconventional resources like web archives, online discussion forums, E-commerce websites, product reviews pages, news and press releases and archives, product demo videos and tech blogs often lead searchers to stumble upon valuable prior art. University publications, conference and seminar discussions proceedings serve as a treasury of information.
While searching through patent databases and well known scientific publications is referred to as “conventional prior art search”, all other forms of searches may be categorized as “unconventional prior art search”. Unconventional prior art search, in most cases, is unstructured and undefined, and depends largely on the skill and knowledge of the expert assessing a patent or application.
The number of internet references for patents have increased over time as seen in a research paper published by the University of Gothenburg.
Six Unconventional sources for searching prior art
With advancements in telecommunications, image and audio/video processing, and memory management, technology standards have been outlined to facilitate interoperability and compatibility. Strategic searches through evolving industry standards and documented minutes of meetings held by standard governing authorities and parties have emerged as a resourceful unconventional source of prior art. Drafts and working documents discussed in a meeting qualify as prior art.
Few technology standards are:
- Telecommunications (ETSI, ITU, EIA/TIA, IETF, ATIS, IEEE…)
- Audio Video (MPEG, JPEG, DVB, HEVC…)
- Electronics (SEMI)
Product datasheets, Manuals, Whitepapers, Brochures
Product datasheets, manuals, whitepapers and brochures released by companies operating in the same field serve as important resources for finding prior art. One of the most useful resources in this category for computer related topics are IBM Redbooks, which are a set of technical guidebooks explaining the use of various IBM products, such as servers, routers, and software.
Blogs, Discussion forums, Articles
Blogs and discussion forums disclose features of products. Forums by software development groups, user groups, consumer electronics fora and software bug fixing meets discuss features and methods of performing tasks and use of various equipment. With the increasing use of the Internet as a public discussion forum and channel to disseminate information, technology specific blogs that are freely and publicly available might host critical technology revelations. Blogs like Engadget, TechCrunch, The Verge, Slashgear and GigaOM provide technology discussions and product reviews that may hold critical data to support a prior art search.
A search for products mapping to claims often leads prior art searchers to e-commerce websites. A prior version of the product can be traced to its predecessors in the company’s website or through general discussion thread searches. Utility products, toys, household articles and electronic gadgets sold on various E-commerce websites around the world may serve as prior art. Ebay, Amazon, AliExpress are common E-commerce websites that harbor millions of products, its product descriptions and the customer reviews to establish the features and launch dates.
Videos, Movies, Demo videos, Product review videos
Youtube videos uploaded by users, researchers and developers demonstrating the features of products, processes of manufacture or working of a product is often helpful in mapping prior art to a patented claim. Movies may also serve as prior art. But one needs to be a movie buff to know the exact movie and remember the clip that could come to the rescue. A video of Steve Jobs’s iPhone launch presentation in 2007 invalidated Apple’s photo gallery touch patent application in Germany in 2013 – so this is some powerful unconventional resource.
Web archives, News archives, Press releases
Information related to earlier released versions of a product are often found on a company’s website. If the current version of the webpage doesn’t host the earlier versions of the product, WayBackMachine can be used to scout for the required version. WayBackMachine archives webpages since 1996. An example of this type of unconventional prior art citations can be found in the US patent US7494397B2, filing date June 14, 2007. The applicant refers to photographic references from video sites, discussion threads, district court rulings, web archive pages.
44 Photo of portion of PicooZ product package; Silverlit 2006 Product Catalog (5 pages total).
45 prior art reference #1, helicopter.
46 prior art reference #2, helicopter displaying writing in French on the tail.
77 1.69 gram RC helicopter-RCGroups.com, http://www.rcgroups.com/forums/showthread.php?t=509295 (6 pages).
78 Paul. “Aviation Week & Space Technology”, v146, n13, p 47(1), Mar. 31, 1997 (Abstract).
92 District Court, Eastern District of Virginia, Norfolk Division, Silverlit Toys Manufactory, Ltd., et al. v. Westminster, Inc., et al., Case No. 2:07-cv-472-JBF/JEB.
93 District Court, Northern District of Georgia, Atlanta Division, Westminster, Inc. v. Silverlit Toys Manufactory Ltd., et al., Case No. 1:07-cv-2450-JOF.
94 reference, en.wikipedia.org/wiki/AH-64-Apache, Jul. 16, 2004 (11 pages).
95 reference, en.wikipedia.org/wiki/Kamov-Ka-50, Kamov Ka-50, Jun. 19, 2004 (6 pages).
96 reference, http://www.globalsecurity.org/military/systems/aircraft/ah-64d.htm, Nov. 7, 2001 (6 pages).
97 reference, web.archive.org/web/20050225044931/http://www.silverlit.com (2 pages), Jun. 5, 2007.
98 reference, web.archive.org/web/20060616140712/boeing.com/rotorcraft/military/ah64d/index.htm, Nov. 23, 2001 (2 pages).
Analyzing data from multiple resources, especially unconventional resources, can help a prior art searcher conduct a systematic and exhaustive check of a patent. Such thorough analysis, especially if conducted during the application stage, can help protect genuine inventions and reduce legal costs that could crop up at a later date.
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