PRIOR ART SEARCH AND ITS IMPORTANCE

INTRODUCTION:

“Prior art” refers to any knowledge that pre-dates the invention. 1 It ranges from any past
technology similar to one’s work, whether it was just created or described. In case there is
evidence of the existing technology, it comes under the ambit of prior art and the same can
hinder the process of receiving patent protection. 

 There are a set of conditions to be satisfied to acquire patent protection. In order to

receive patent protection, one must show that the idea is not an already known one
(ie.)novelty. If certain aspects of the invention are already known or have been
invented by others, patent protection may be granted only to the novel parts of that 
invention.
 It is also pertinent to consider the filing date of the patent application in question. It is
prior art if the publication or disclosure was made before (whether it is days or years)
the day the patent was filed.

PRIOR ART SEARCH

A patent application can be rejected if there exists, a patent of a product or a published patent
application. Registered as well as published patents or any printed publication which
potentially contains patentability of any claim in a patent application qualifies as “prior art”.2

There is a need to consider the pertinence of prior art search. It is important not only for
disproving lack of novelty or obviousness but also for substantiating other grounds like
insufficient description in support of invention. The filing by the Opposition can be used as a
means to put before a controller printed publications or other information which might not be
identified in a routine search during the examination.3

1
https://www.lexisnexisip.com/knowledge-center/what-is-prior-art-research-and-how-is-it-done/
2
https://blog.ipleaders.in/prior-art-search/
3
Ibid
The chance of success is dependent upon the strength of the written submissions and the
particular matters raised. The Controller may or may not be persuaded that the matters raised
affect the patentability of a patent claim.4
In case the Controller cites the prior art in the Opposition, the Applicant has the option of
amending the specification. However , the Controller has the discretion to refuse the patent
claim or grant the patent with narrower claims. 

IMPORTANCE OF PRIOR ART SEARCH:

Prior art searches are a means to prompt the controller to be more vigilant in considering the
question of patentability or any other grounds of non-compliance or identification of
additional relevant documentation. If the Opposition arguing regarding the prior art
contention raises matters such that the Controller  has reasonable grounds to infer that the
application does not comply with the Patent Act or Patent Rules, the Patent may not be
granted at all.

However, there is a limitation with respect to a third party’s participation. The third party’s
submission concerning prior art is noted by the respective Patent Office but no further
information will be given as to action taken. Accordingly, it is the duty of the third party to
independently monitor the patent file to determine the outcome. Moreover, the third party has
no right of appeal if the patent has been granted.

In the General Tire case, Sachs LJ summarized the law on anticipation by prior publication as
follows:
"To determine whether a patentee's claim has been anticipated by an earlier publication it is
necessary to compare the earlier publication with the patentee's claim. The earlier publication
must, for this purpose, be interpreted as at the date of its publication, having regard to the
relevant surrounding circumstances which then existed, and without regard to subsequent
events. The patentee's claim must similarly be construed as at its own date of publication
having regard to the surrounding circumstances then existing. If the earlier publication, so
construed, discloses the same device as the device which the patentee by his claim, so
construed, asserts that he has invented, the patentee's claim has been anticipated, but not
otherwise. In such circumstances the patentee is not the true and first inventor of the device
4
ibid
and his claimed invention is not new within the terms of section 32(1)(e)" (this corresponds
to s 64(1)(e) of the Indian Patents Act).5
 
PATENTS AND PRIOR ART SEARCH:

The primary skill for efficient patent searching is to use keywords that narrow the search
without eliminating candidate prior art. A prior art searcher must be knowledgeable with the
terminology used in the technical field. Other techniques in patent searching include patent
cluster analysis using keywords and patent class/subclass, and backward tracing of forward
references. A search of all previous public disclosures (prior art) including, but not limited to,
previously patented inventions, should be conducted to determine if an invention has been
publicly disclosed and thus is not patentable. 6While a search of the prior art before the filing
of an application is not required, it is advisable to do so. In most patent laws, prior art is
expected to provide a description sufficient to inform the average worker in the field (or the
person skilled in the art) about the invention. Prior art must be available in some way to the
public, and many countries require the information to be recorded in a fixed form somehow.
Inventors can perform basic prior art searches to see what knowledge (usually in the form of
patents) already exists in the invention’s scientific area although it is advisable to have a
professional prior art search conducted through a patent expert.

 Therefore,  a basic patent search involves the following steps:

1. Accessing a publicly available patent database
2. Performing a search based on keywords
3. Skimming patents and patent applications that you found.
4. Reading the patent and patent applications in detail
5. Analyse conflicts if any
6. Determine novelty

CONCLUSION:
5
http://www.hkindia.com/news_letter/article/1/Patent%20artile-1.html

6
https://www.uspto.gov/help/patent-help
The “prior art” (i.e., the body of knowledge existing prior to the invention) helps determine
whether or not the invention is “new” and “non-obvious.” 7 Therefore, it is important to know
and understand the prior art by making a professional prior art search so that one can
determine distinctions between the prior art (what is already known) and the invention (what
is new.)
 

7
https://otl.stanford.edu/performing-basic-prior-art-search-0