As a Researcher, it is important to understand the purpose and goal of the research. The nature of the information we are seeking in a given Study dictates the type of research that is required. As such, each research type demands a different approach. It impacts how you read the Study and prepare your search.
Prior Art Search
A majority of the Studies on Article One require a Researcher to conduct a prior art search. This type of research aims to find prior art or evidence that may suggest that a given invention or technology was already known and publicly available by a given date.
Prior art refers to the entire body of public information that can potentially affect a patent’s validity. It is documented evidence that may show that an invention or technology already existed before a certain date of interest. Prior art searches require Researchers to find literature such as patents, journal articles, and other publications that disclose specific technical elements by a set date.
Prior art searches on Article One may be in the form of Validity or Patentability Studies.
A validity search is a prior art search involving a patent that has already been issued. Its goal is to determine whether the patent is valid. It aims to uncover any prior art that may prove that the patented technology already existed before the patent was filed. Since patents are meant to grant rights to the first inventor of an idea, a patent is valid only if it covers a technology that was not previously known or available.
Understanding the claims of the patent is crucial in a validity search. The claims describe the individual elements of the technology disclosed in the patent. For Studies on Article One, these elements are included in the Research Requirements. A Researcher needs to find these elements in literature publicly available on or before the given Latest Date for Responses (LDR). Your submissions must describe these elements in as much detail as possible.
A patentability search is a prior art search involving technical disclosures instead of an issued patent. Its goal is to determine whether the technical disclosures may be included in a patent application. Patentability searches are generally performed either during or before the patent application stage to determine whether or not a given technology may be patented.
Understanding the key elements of the technical disclosures is important in a patentability search. These elements describe the main novel idea that may be patented. A Researcher seeks to find these elements in literature that may demonstrate how the idea is already applied to a variety of industries and/or techologies.
State of the Art Search
A State of the Art Search aims to ascertain what is already known in a given field. Given a broad description of a technology, a state of the art search gathers literature that provides specific details about the latest developments in that field.
The general description of the field or technology is the Researcher’s starting point in a state of the art search. The description will help you come up with a list of inventors, companies, institutes, and other industry leaders and experts that will facilitate your search.
Evidence of Use
Unlike prior art and state of the art searches, evidence of use does not deal primarily with a literature search. As the term suggests, evidence of use aims to match the independent claims of a given patent to a technology standard or to an existing product. By directly mapping the elements of a patent claim to the excerpts of a standard or to the features of a product, the Researcher illustrates how the standard or product embodies the elements of the patent. Specific instructions are provided in the Study.
Patent-to-Standards Evidence of Use
Standards are technical details or specifications that an industry group had agreed to implement or follow when manufacturing certain products. Standards help ensure that products from various vendors or manufacturers work together so product incompatibilities are minimized within a larger non-vendor controlled environment. For example, WiFi standards ensure that laptops and mobile devices from various vendors are all able to access and use WiFi networks anywhere without users having to worry if the devices would be compatible with a particular wireless network.
A Patent-to-Standards evidence of use matches the elements of a patent claim to the excerpts of such a standard. This type of research demonstrates how the patent applies to the technical standard. For more tips about this type of research, please refer to this blog post.
Patent-to-Product Evidence of Use
Evidence of Use relates to information that suggests or shows that a given product is using a certain patented technology. The evidence demonstrates that the features of the product relate directly to the claims of a given patent. The evidence can be a product manual, product literature, or even marketing literature that explains the technology in a way that allows one to link it to a specific patent claim.
A Patent-to-Product evidence of use matches the elements of a patent claim to the features of a product. This type of research demonstrates how the patent covers the features of a product. The Researcher looks for products, systems, or services in the market that make use of the invention claimed in the patent (i.e., have product features that match all the elements of at least one independent claim of the patent). The Researcher then maps each element of the patent claim to a product feature, as documented in the product literature. For more tips about this type of research, please refer to this blog post.
For more information about participating in Claims Mapping Studies, please refer to this page.
Like Evidence of Use, a Survey does not involve a literature search. A Survey aims to understand the current condition of the marketplace as it relates to a particular product or technology. For example, a survey may be used to identify products or technologies, assess compliance to certain standards, or determine market trends. A Researcher may need to visit a retail outlet to conduct this type of research.
Unlike patents, a trademark may still be recognized even if it is not registered. Trademark rights may be established by the use of the mark for a specific product in a given geographic area. Since the trademark is not registered, searching government databases or registers for trademarks will not yield results. As such, a common law trademark search requires a Researcher to find publicly available information (e.g. actual product, advertisements, product information or collateral, newspaper or magazine article, etc.) that demonstrates that the mark was used for a specific product in a given geographic area at a particular time.