How can one ensure the innovative nature of a given invention?
How can one ensure that a patent application is accepted?
Conversely, how can one take advantage of the examination period to block a potentially troublesome patent application from a competitor?
Follow the guide to understand everything about patent prior art searches!
PATENT SEARCH: DEFINITION
To be admissible, a patent application must demonstrate the innovative and innovative nature of the process, material or technology that one wishes to patent. Indeed, it is impossible to patent an element 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 request for patent .
The office responsible for issuing or refusing the patent generally takes between 2 to 5 years to examine your application.
The key stages 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). A timestamp of the request is made.
- After 6-10 months, the examiner submits his prior art search report. If a lack of patentability is mentioned, the company has 3 months to respond and argue.
- At +18 months , it is the end of the secrecy period. The patent application becomes accessible in the patent databases. Your competitors become aware of the nature of your invention. They then have a period of 3 months to contest your application and prevent you from patenting. This is what we call “the third-party observation period”.
- After 2-5 years , and if all patentability criteria are met, the patent is granted. You then have a 20-year monopoly on the claimed invention – from the filing date – in the country where the application was made.
Good to know : in France, it has been possible since 2020 to oppose a granted patent with the INPI. In the same spirit as for the filing of third-party observations, companies have a period of 9 months, from the grant of the patent, to oppose them . If the opposition is well founded, this approach may result in the total or partial revocation of the patent or its maintenance in a modified form.
PATENT PRIOR LIABILITY SEARCH: THE PROCEDURE TO FOLLOW
To conduct a prior art search, the examiner will first verify that the claimed innovation does not already exist in existing patents or patent applications filed before yours. If they find a similar innovation, already claimed or merely mentioned by a third party, a lack of novelty will be established and your patent application will be rejected.
Filing a patent application requires effort, time and money. your best interest to identify potential pitfalls early on. This therefore involves systematically searching for any document which may have already made public the subject of the invention or the process for which you are about to claim authorship.
In this regard, many are satisfied with a search on the patent databases, using a few key words. This is an error, because it is any publicity, that is to say any placing in the public domain of key information relating to the subject of your claim, which can antedate your patent application . This information can just as easily be found in scientific publications, web articles, conferences, etc.
You will therefore ideally need to explore all the literature, beyond just the patent bases. Regardless of the communication channel, was the information made public? This is THE criterion that will take precedence during a prior art search.
Spoilers: be careful not to shoot yourself in the foot… by giving away spoilers!
It happens much more often than you think…
Let's imagine that you filed your patent application on 1st . Except that on May 31, you were invited on a radio show during which you disclosed substantial elements of the technology (process, ingredients, etc.) included in the list of your technical claims... This sharing in space public may be retained by the Patent Office and/or by a competitor to refuse you the novelty criterion and consequently reject your patent application.
This disclosure can be made by you, but also by a partner associated with your R&D work…
Hence the obvious interest in subjecting all stakeholders to a strict confidentiality agreement, preserving your competitive advantage of course, but if necessary, also your chances of being able to claim the monopoly through a registered patent. exploitation of your innovation.
> Participate in our webinar “Best practices in patent monitoring”
HOW TO TAKE ADVANTAGE OF THE THIRD-PARTY OBSERVATION PERIOD TO BLOCK A PROBLEM PATENT APPLICATION?
You may also be required to carry out a prior art search on a competing patent. But your goal will be very different.
When the patent application is made public, 18 months after the filing of the application, you have 3 months to bring to the attention of the examining office any information likely to hinder the granting of a problematic patent, particularly with regard to lack of inventiveness.
The working method will be the same. The objective, however, will be very different. You will then be searching for any document or public communication predating the competing patent, and here more than ever, your exploration will encompass all the information sources you can review. Indeed, if a prior and similar patent exists, the probability that the examiner will identify it is generally quite high. You will then be required to conduct a much broader search within a limited timeframe.
Without suitable tools, this research will require considerable time , access to various databases, and potentially confronting you with a very large amount of information.
Read also: Industrial property: how best to protect your innovations?
For an IP department that is already generally very busy, meeting the deadline for prior art filing a patent can prove to be a real challenge.
For start-ups and SMEs seeking to file a patent, the prior art search carried out by a personal protection firm may prove incomplete, as it will focus on the closest patents, omitting other sources of information .
Designed to facilitate and accelerate the analysis of heterogeneous data, TKM Platform is a valuable ally for anyone wishing to conduct a patent prior art search.
Our software solution for searching, visualizing and analyzing multi-source data allows you to obtain a 360° view of a given universe.
With such a tool, you maximize your chances of having your patents granted, or conversely, of blocking an inconvenient application from a competitor.
In addition, you will be able to benefit from a mapping of your strategic environment, which complements the search for prior art.
