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 PRIORITY SEARCH: DEFINITION
To be admissible, a patent application must demonstrate the innovative and novel nature of the process, material, or technology that one wishes 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 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 relevant office (the INPI in France, or the EPO for Europe, for example). The application is timestamped.
- Six to ten months later, the examiner submits their prior art search report. If a patentability issue is raised, the company has three months to respond and provide an explanation.
- At 18 months, the secrecy period ends. The patent application becomes accessible in patent databases. Your competitors become aware of the nature of your invention. They then have a 3-month period to challenge your application and prevent you from patenting it. This is known as 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, since 2020, it has been possible to file an opposition to a granted patent with the INPI (National Institute of Industrial Property). Similar to the process for filing third-party observations, companies have nine months from the date the patent is granted to file an opposition. If the opposition is well-founded, this action can lead to the total or partial revocation of the patent, or to its maintenance in a modified form.
PATENT PRIORITY 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. It is in your best interest to identify potential pitfalls early on. This includes systematically searching for any document that might have already disclosed the object of the invention or the process for which you intend to claim ownership.
In this regard, many people simply search patent databases using a few keywords. This is a mistake, because any publicity—that is, any release into the public domain of key information relating to the subject matter of your claim—can precede your patent application. This information can be found in scientific publications, web articles, conferences, and so on.
Ideally, you should therefore explore all available literature, going beyond just patent databases. Regardless of the communication channel, has the information been made public? This is THE key criterion in 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 you filed your patent application on June 1st. However, on May 31st, you were invited to a radio program during which you disclosed substantial elements of the technology (process, ingredients, etc.) included in your list of technical claims… This public disclosure could be used by the Patent Office and/or a competitor to deny 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 benefit of subjecting all stakeholders to a strict confidentiality agreement, preserving your competitive advantage of course, but also, if necessary, your chances of being able to claim, through a filed patent, the monopoly on the 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.
