How can you make sure a given invention is genuinely novel?
How do you go about making sure your patent application gets accepted?
Conversely, how can you use the examination period to block a competitor’s patent application that could prove problematic?
Follow this guide to understand everything about patent prior-art research!
PATENT PRIOR-ART RESEARCH: DEFINITION
To be admissible, a patent application must demonstrate the innovative and novel character of the process, material or technology you wish to patent. Indeed, it is impossible to patent something that already exists in the public domain.
Before claiming a monopoly on a technology for 20 years, you will therefore have to prove and demonstrate that you are not claiming something that has already been published, in any form whatsoever,before the date on which you filed your patent application.
The office responsible for granting or refusing the patent generally takes between 2 and 5 years to examine your application.
The key steps in the life of a patent
- The patent application is filed with the competent office (the INPI in France, or the EPO for Europe, for example). The application is given a timestamp.
- At +6-10 months, the examiner issues their prior-art search report. If a defect in patentability is noted, the company has 3 months to respond and present arguments.
- At +18 months, the secrecy period ends. The patent application becomes accessible in patent databases. Your competitors learn the nature of your invention. They then have a 3-month period to challenge your application and prevent you from getting the patent. This is known as the “third-party observation period”.
- At +2-5 years, and if all the patentability criteria are met, the patent is granted. You then hold a 20-year monopoly on the claimed invention — counted from the filing date — in the country where the application was filed.
Good to know: in France, since 2020 it has been possible to oppose a granted patent with the INPI. In the same spirit as filing third-party observations, companies have a 9-month period, from the patent’s grant date, to oppose it. If the opposition is well-founded, this step can lead to the total or partial revocation of the patent, or to it being maintained in an amended form.
PATENT PRIOR-ART RESEARCH: THE STEPS TO FOLLOW
To carry out their prior-art search, the examiner will first check that the claimed innovation does not already exist in existing patents, or in patent applications filed before yours. If they find an innovation similar to yours, already claimed or merely mentioned by a third party, a lack of novelty will be noted and your patent application will be rejected.
Filing a patent application takes effort, time and money. You have every reason to identify potential pitfalls very early on. This notably means systematically searching for any document that might already have made public the subject matter of the invention or the process you are about to claim as your own.
On this point, many people settle for a search of patent databases using a few keywords. That’s a mistake, because it is indeed any form of disclosure, meaning putting into the public domain any key piece of information relating to the subject matter of your claim, that can be used as prior art against your patent application. This information can just as easily be found in scientific publications, web articles, conferences…
Ideally, you should therefore explore the entire body of literature, beyond patent databases alone. Regardless of the communication channel, was the information made public? That is THE criterion that will prevail during a prior-art search.
Disclosures: be careful not to shoot yourself in the foot… with a spoiler!
This happens far more often than you’d think…
Let’s imagine you filed your patent application on June 1st. Except that on May 31st, you were a guest on a radio show, during which you disclosed substantial elements of the technology (process, ingredients…) included in your list of technical claims… This sharing in the public space could be used by the Patent Office and/or by a competitor to deny you the novelty criterion and, as a result, reject your patent application.
This disclosure can come from you, but also from a partner involved in your R&D work…
Hence the obvious value of having all stakeholders sign a strict confidentiality agreement, preserving your competitive advantage of course, but also, where applicable, your chances of being able to claim, through a filed patent, a monopoly on exploiting your innovation.
> Join our webinar “Best practices in patent intelligence monitoring”
HOW CAN YOU USE THE THIRD-PARTY OBSERVATION PERIOD TO BLOCK A PROBLEMATIC PATENT APPLICATION?
You may also need to carry out a prior-art search on a competitor’s patent. But your objective will be very different.
When the patent application is made public, 18 months after filing, you have 3 months to bring to the examining office’s attention any information likely to hinder the grant of a problematic patent, particularly regarding a lack of inventive step.
The working method will be the same. The purpose, however, will be very different. You will then be looking for any document or public communication predating the competitor’s patent, and here more than ever your exploration will cover every source of information you can review. Indeed, if a similar, earlier patent exists, there is, in principle, a fairly high probability that the examiner will identify it. You will then need to carry out a much broader search within a limited time frame.
Without the right tools, these searches will take you a considerable amount of time, require access to a variety of databases, and potentially confront you with a very large volume of information.
➡️ Also read: Industrial property: how can you best protect your innovations?
For an IP department that is in principle already quite busy, meeting the deadline to establish prior art against a patent can prove to be a real challenge.
For start-ups and SMEs looking to file a patent, the prior-art search carried out by an individual protection firm can prove incomplete, as it will focus on the closest patents, leaving out other sources of information.
Designed to facilitate and speed up the analysis of heterogeneous data, TKM Platform is a valuable ally for anyone looking to carry out a patent prior-art search.
Our multi-source data search, visualization and analysis software solution indeed makes it possible to get a 360° view of a given field.
With a tool like this, you put every chance on your side to increase your odds of getting your patents granted, or conversely, of blocking a problematic application from a competitor.
In addition, you can benefit from a mapping of your strategic environment, complementing the prior-art search.