SERVICES

SEARCHES

WHAT IS A PRIOR ART SEARCH?

• Prior Art is any directly relevant patent filed or disclosure made prior to the current invention.
  Directly relevant prior art has "priority" over, and therefore prevents any patent from issuing.
   
• Before applying for a patent or design, a thorough "prior art search" is a necessary first step.
   
• The inventor must also decide on the jurisdictions where they intend selling their product, so that the searcher can ensure there is no directly relevant prior art that the inventor might infringe.

Why is a search needed?

• Searching before developing a product preserves valuable time, energy and money!
  Thorough prior art searching tells the inventor who their competitors are, the risk that the inventor's product might infringe another's, and  the background of their particular field.
   
• Even though you are probably an expert in the field of your invention, and haven't seen your invention anywhere,  that doesn't mean that the relevant patent hasn't been filed, only  that its inventor never brought their product to market. They may still have full rights to their invention. Also, the high cost of the patenting process sometimes stalls the marketing & sales of a product.
   
• Without a search, an inventor risks a lawsuit for infringement, loss of all past income from sales of another's invention, and an injunction to stop production or manufacture of said product.

Top of the page

How can a search be used?

• When a prior art search is completed, the search data is collated into a Patent Search Report (PSR), which is described more fully on the Documents  page.
   
• The information from a PSR not only tells the inventor if they can proceed with any application, by knowing that their invention is truly new, but the PSR also provides a thorough background of the field of the invention which can be used when writing provisional, utility or design applications.
   
• The information from a patent search can also be used by the inventor to more thoroughly understand their competitor's products, and maybe even discover a different approach to their own invention based on the solutions implemented in earlier inventions.

Limitations of Searches

• A patent searcher is limited to the data available at the time they are performing the search, and cannot know about patents not yet posted to patent databases, such as those held for 18 months in the US, and for up to 30 months with international  filings. These patents are often referred to as "submarine patents", lurking beneath the waves, a potential risk to the unsuspecting inventor who hopes they are not infringing, but who has no way of knowing. This risk is present to all inventors and inventive companies, no matter how thorough the search performed.
   
• The depth of a search should be determined by the complexity of the invention, the number of directly relevant competing patents, and the purpose of the inventor. The inventor may want to know if they can get a patent (patentability) , whether they will infringe on another's patent (infringement), or simply whether they will have "freedom to operate" (i.e. sell their product without risk of infringement lawsuit).
   
• Prior art searches performed by Inventive Solutions are patentability searches. After reviewing the PSR, the client may request an infringement search, which is an analysis of the claims of directly relevant patents, as described in the section on claims analysis grids in Documents.

Top of the page

Who should do a search?

• Patent searching is not for everyone. Expertise in your field is sometimes too narrow a skill. An inventor might miss that critical patent that will force them to forfeit their application fees when a patent examiner finds it, or worse find out when they are being sued for infringement and to have their patent revoked.
   
• For example, you might describe your invention based how it was developed, and what words make most sense to you. However, if you used a lawyer, they might describe it with more broad and obscure terms. The difficulty in patent searching is that the searcher is trying to find those relevant patents which have been named by another inventor and then renamed by their lawyer.
   
• You need a patent searcher who has a methodical approach and an experienced understanding of how to use the patent search databases. They must also be adept at understanding the nuances of technical and legal language, in order to consistently focus on the appropriate search parameters to ensure a thorough examination of the prior art for their client. For the above reasons, it is also usually more efficient and practical when the searcher writes the application.

How you can help with the search?

• Before asking for professional help, an inventor often tries their hand at patent searching, first because it looks simple to do on the surface, but second because inventors want to try and learn new things, or they wouldn't be inventive. Sometimes they are thorough in their search habits, but sometimes they are not.
   
• You can help us do a faster and more thorough search if you record any relevant search data you have discovered on your own, and forward it to Inventive Solutions before the search is begun. Only relevant patent numbers are needed, not the entire patent documents.
   
• Given that an inventor is often an expert in the field of their invention, any information about any related competing products may also help the searcher quickly zero into the relevant prior art.

Top of the page

DRAWINGS

Why drawings are needed

• An invention disclosure, i.e. a provisional, utility or design application, should employ drawings not because they are strictly mandated, as they are not, but because they just make it easier for one to understand the invention.
   
• It is mandated that any disclosure be sufficiently detailed so that "one skilled in the art or science" is able to make the invention based solely on the disclosure.
   
• Drawings bring clarity to a disclosure that words often cannot, as long as the drawings are sufficiently detailed, complete and clear.

Drawing Requirements

• The US Patent & Trademark Office (USPTO) used to be very strict about the quality and accuracy of drawings, partly because many engineers used to employ draftsmen to create them. Today, with CAD drawing programs the rules have become much easier to comply with, and less stringent guidelines are required.
   
• One way  to discover acceptable patent drawing practice is to review drawings in issued patents found on the relevant databases. Or one may review the recent patent drawings posted on this site.
   
• Two very useful references on drawing practice are the relevant sections in the guides for filing Utility & Design patents issued by the USPTO.

Top of the page

Drawings we can provide

• Drawings required for provisionals, patents & designs are simply line drawings that show all parts of an invention from all relevant sides. Inventive Solutions can create these drawings.
   
• While a  line drawing is a 2-D representation of an invention, it can include perspective or isometric views, and  these can only be produced by a computer aided design (CAD) program.
   
• Inventive Solutions can generate new drawings or edit perspective CAD drawings as patent drawings that are completely sufficient to meet all drawing and disclosure requirements.

How to supply basic drawings

• Due to the availability of rapid prototyping, product designers, and marketing agencies, inventors often already have access to quality drawings. There is no need to reinvent the wheel.
   
• Engineering drawings, marketing presentations, CAD prototypes, all can form the basis of patent drawings, as long as they are in a format that can be useful. If drawings are not available, even hand drawn sketches can be useful if they show all the parts of the invention, and they can form the basis of new drawings.
   
• A basic guide for inventors who intend to provide digital format drawings is available here.

Top of the page

Photographs versus drawings

• Digital photographs can be taken on site, from which drawings can be drafted remotely.
   
• Drawings are usually the preferred method of graphical representation for provisionals and utility applications, but they may be used for design patent or industrial design applications.
   
• Photographs used for design applications must be of sufficient clarity to show all relevant visual attributes of the design, because the entire basis of the disclosure rests on these photographs, unlike the thorough written description that accompanies the utility patent.

Trademark Graphics

• Occasionally, an inventor requires an associated trademark graphic to identify his product, and this is often derived from the conceptual or functional nature or appearance of their invention. 
   
• Inventive Solutions has a background in graphic design, and can help with the design of graphics related to a current invention project for the purpose of trademarking.
   
• Inventive Solutions does not file trademarks or provide trademark documentation, for which the inventor should consult a trademark agent.

Top of the page