Charting the Course Around Willful Infringement

willful

/ˈwɪlfʊl,ˈwɪlf(ə)l/

(of a bad or harmful act) intentional; deliberate.

“willful acts of damage”

There was a time courts treated willful infringement simply as an act of intentionally copying a patented invention. The onus was on the plaintiff to present convincing and clear evidence of an obvious infringement. Things changed; the alleged infringer now had to build a record to show that it did not act in bad faith. In 2016, the US Supreme Court issued an opinion wherein they stated that the Patent Act provides for enhancement of damages up to three times in case infringement is proved.

The courts have taken that even further in favour of the patent holder. Last month, the courts in Texas were of the opinion that willful infringement occurs when the infringement notice is not replied to. Holding Having silently watched the parade pass it by, Apple cannot now complain that the parade didn’t stop on its own to entertain them”, Apple has been ordered to pay damages to the tune of $308.5 million!

You can no longer ignore the infringement notice; it would be considered as a case of willful infringement!

Whether Willful Infringement or Not – Notice is here. Now What?

The logical first step would be to check the following:

  • Is the notice from a genuine patent holder or a patent troll? 
  • How strong is the subject patent? 
  • Does it really infringe? 
  • What’s the existing prior art? 
  • Has it genuinely been overlooked by the innovation team?
  • Was the innovation very easily available? 
  • Did it not occur to the development team that something so easily available might be patented?

Once you figure out if there is any merit in the notice, it’s time to decide which route to take – settle this dispute or fight the good fight in the court? 

A couple of things to remember 

  1. A settlement is almost always a good idea. Only if you see merit in the infringement notice you have received. 
  2. Taking the court route is extremely resource heavy. It will drain your enterprise of time, energy and of course, money. It might be worth depending on what’s at stake.

If you, after weighing all considerations, believe that an out of court settlement works better for you, there won’t be any need to respond to the notice. Make sure that your settlement agreement is air-tight when it comes to court claims against you though. 

If you do choose to go down the legal route through courts, you must reply to the notice.

Check Patent Strength

Wonder if there’s a quick and effective way to help you decide the route? A tool that helps you gauge the strength of the patent without even employing your IP team? The IP resources should be saved to look into the matter only if the subject patent appears real strong.

Imagine a search tool that can access any technical information out there – patent as well as non-patent literature. A search tool that has the most advanced algorithm to find you only the most relevant results. To top it all – conducting search on such a platform is a piece of cake. Sounds unbelievable?

We hear you, however it’s possible to create such a tool with the advances in AI capability to interpret the patent language. In fact we’ve taken the first step towards building such a tool. We call it PQAI – Patent Quality Through Artificial Intelligence.

PQAI is a collaborative initiative that aims to leverage AI to create a tool we just described. We envision – “A universal repository of humanity’s entire technical knowledge efficiently accessible to everyone and anyone.”.

At the moment, PQAI is far from perfect but it’s definitely promising. We say that with confidence because of the results that various validation test cases we have run have given us. A few months ago, we identified some IPR cases and ran the subject patents through PQAI. In some of these cases we observed that PQAI was able to find the prior art cited by the sued party to invalidate the subject patent. We’re sharing one of those cases with you right here:

Facebook VS Villmer LLC Inc

Facebook had received an infringement notice over Oculus Go from Villmer. We used PQAI to run a prior art search to see if it could have helped locate prior art. It gave us results that matched the prior art that was submitted to have the patent invalidated. 

The patent that was the subject matter of the litigation bore the number US9618747. The patent broadly pertains to head-mounted displays. Villmer’s infringement allegations focused on Facebook’s head-mounted virtual reality (VR) devices, the Oculus Go and the Oculus Quest. The ’747 Patent was valid, enforceable, and was duly issued in full compliance with

US law. 




A picture of Oculus Go by Facebook.

 A drawing from Villmer’s patent

We picked up claim 1 from patent number US9618747 and pasted it in the PQAI query box. Here’s a screenshot of one of the prior art that Facebook listed during IPR to have ‘747 invalidated.

Prior art snapshot from IPR document

Here’s the prior art PQAI spotted against our search for Claim 1 from ‘747. The spotted patent bears no. US2012005053A1, one of prior arts listed by Facebook: 

Running a query through PQAI

PQAI is a search tool that is a work in progress. We would like to see it get to a stage where prior art like this ranks higher and results are even more efficient. And we are constantly working toward perfecting the system. 

Get Involved – Join the PQAI Initiative

PQAI is a collaborative initiative  to build an AI-powered prior art search tool accessible to all involved. We would love all stakeholders to come forward and join the initiative. You as a corporate can contribute too! The question is why would you….

Well with PQAI, we aim to create a more stable and transparent patent ecosystem for corporations. We believe it will make R&D investments more predictable, increase confidence in patents, and make risks and opportunities more visible. We could use all the resources we can get in making this initiative a success. You could be part of this revolution by funding the development of the tool. In return, you will give to yourself, and the world at large a system to file better patents. 

Disclaimer – “The statements and views expressed in this post are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

103 Type Rejection: How to avoid it on your patent application?

Avoiding 103 type rejection PQAI

PQAI helps you identify the combinational prior-art that could be cited as the basis of an 103 type rejection on your patent application.

Looking forward to patenting your invention, the predicament of getting a rejection lingers around. Well, many a time it may be possible to overcome the rejection but it unnecessarily delays the allowance. Do you know what’s the most common reason for rejection? – It’s § 103 or obviousness.

103 type rejection accounts for 46.5% of all patent rejections

Note: Stats are based on the rejections (Final + Non-Final) given by the Patent Examiners, for the US applications from January, 2017 to September, 2020.

Stats show that 46.95% of patent rejections are because of existing combinational prior art (§103 Type). Read on if you don’t want the examiner to reject your patent application saying – ”your invention is obvious in light of so and so references”.

§ 103 Type Rejection | Combinational Prior Art

You receive a 103 type rejection when the examiner finds more than one document that jointly represents your invention as an obvious improvement.

Let’s say the idea is – “A drone for fighting forest fires that uses canisters filled with dry ice as fire extinguishing material.

Now if there exists two prior art documents: i) One that describes the use of aerial vehicles to fight forest fires. ii) And another that describes the use of powdered carbon-di-oxide (dry-ice) to extinguish the fire. Our idea shall be deemed obvious.

Combinational prior art to avoid 103 type rejection

Let’s run the example through PQAI (an open-source search engine that has the capability to identify the combinational prior art) and see what happens:

103 type rejection - Combinational prior art search using PQAI

So, we ran the idea query through PQAI and as a first combination of results, we got this:

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

One prior art is talking about fire-fighting drones and second is describing the usage of dry-ice in fighting fires.

What causes § 103 type rejection?

According to USPTO, your idea should stand these tests-

  • Only one reference doesn’t need to disclose your invention holistically. An examiner can use a combination of references to relate to your idea.
  • Rather than considering the differences between the idea and the prior arts, the claimed invention as a whole shouldn’t be obvious over the referred prior art.
  • Your idea as a whole shouldn’t look obvious to a person having ordinary skills in the art (PHOSITA) over existing references during the time of invention.

In our example, the drone is a combination of 2 references that together make the invention possible. The example can’t stand against these guidelines by USPTO. So, our drone is liable to get a rejection under section 103.

You might like to check the video here that shows why our fire-fighting drone with dry ice would fail the test of section 103.

How to rule out § 103 type rejection?

It might not be a bad idea to run your idea through PQAI once to look for the combinational prior art. With PQAI, we have dreamt of creating the world’s first prior art search engine that can identify the combinational prior art. We have also taken the first step to realize this dream. We have developed the first version of PQAI and continuously training our AI engine to perform better. The dream that we have seen cannot come true without the support of people from across the globe especially inventors, patent professionals, NLP practitioners, patent offices etc. In the next section of the article we are presenting a few cases where PQAI spotted the prior art cited by the patent examiner to give a 103 type rejection.

PQAI | Combinational Prior Art Validation Tests

Application NumberPublication NumberPriority DateAssigneeRejection DateRejection TypePublication No. Prior ArtPQAI Input
16246472US10731375B27/6/16NABORS DRILLING TECH USA INC23/4/20103US9027287B2Abstract
15866107US10696381B29/1/18THE BOEING COMPANY,CHICAGO,IL,US15/4/20103US5908174AClaim 1
16451553US10754607B226/9/18QUALCOMM INCORPORATED,SAN DIEGO,CA,US16/4/20103US6396329B1Abstract
15712616US10762997B212/10/16KOREA ATOMIC ENERGY RESEARCH INSTITUTE,DAEJEON,KR22/4/20103US20140205052A1Claim 1
14594517US10777098B112/1/15RAYLYNN PRODUCTS LLC,GROVE CITY,OH,US22/4/20103US5121745AAbstract
16123902US10778561B28/9/17BROCADE COMMUNICATIONS SYSTEMS LLC,SAN JOSE,CA,US23/4/20103US20130266307A1Abstract

For each of the listed 6 cases let’s see how PQAI spotted one of the prior arts used by the examiner to reject the patent application.

Case#1: US10731375 – “Side saddle slingshot drilling rig”

We picked up the abstract of the subject patent application – US10731375 ran it through PQAI.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted a US patent titled “Fast transportable drilling rig system” – US9027287B2 as one of the prior art in the resultant 10 combinations.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Case#2: US10696381B2 –Hydraulic systems for shrinking landing gear

For this application, we picked up the claim and ran it through PQAI. 

#sidenote: When looking for prior art using PQAI for a particular patent, it’s best advised to put the invention query as (along with the priority date filter): 

  1. Abstract 
  2. Independent claims one at a time 
  3. Summary 
  4. Embodiments from specifications
Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted US5908174A – “Automatic shrink shock strut for an aircraft landing gear” as one of the results in 10 combinations it presented. It’s also one of the prior arts listed by the examiner to reject the patent application.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Case#3: US10754607B2 – “Receiver and decoder for extreme low power, unterminated, multi-drop serdes”

We picked up the abstract from the patent application US10754607B2 and ran it through PQAI under the combinations (103) option.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted one of the prior arts – US6396329B1; it’s one of the prior arts cited by the examiner to reject the patent application US10754607B2.

Case#4: US10762997B2 – “Decontamination method reducing radioactive waste”

We picked up the claim 1 of the subject patent application US10762997B2 and ran it through PQAI as shown below:

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted one of the prior arts, the examiner cited to give 103 type rejection – US20140205052A1.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Case#5  US10777098B1 – “CPR training device”

We picked up the abstract of the subject patent application – US10777098B1 and ran it through PQAI to look for the combinational prior art.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted US5121745A – “Self-inflatable rescue mask” as one of prior arts in one of the combinationational results. It’s also one of the prior arts cited by the examiner to reject the patent application US10777098B1.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Case#6: US10778561B2 – “Diagnostic port for inter-switch and node link testing in electrical, optical and remote loopback modes” 

We picked up the abstract of US10778561B2 and ran it through PQAI with a date filter. We looked for results published before 2017-09-08.

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Snapshot from PQAI

PQAI spotted US201303266307A1 as a prior art in two combinations. US201303266307A1 is one of the prior arts cited by the examiner to reject the subject patent application. 

Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI
Avoid 103 type rejection by conducting combinational prior art search using PQAI

Result snapshot from PQAI

Use PQAI for Combinational Prior Art Search (103 type)

§103 type – combinational prior art  is the most common type of rejection at the patent office. At PQAI, we have taken a shot at creating  a prior art search engine that’s capable of spotting combinational prior art. We are continuously testing and improving our algorithm to perform an even better search. We propose that you run your idea at least once through PQAI to look for combinational prior art before applying for a patent. All that’s needed is a few minutes of your time, who knows – PQAI may become your saviour from failing at the patent office.

Happy patenting! Try PQAI now!

Prior Art Search Navigation made Easy with PQAI

Prior Art Search Navigation made Easy with PQAI

Informative Snippets in Results for Efficient Relevance Judgement during the Prior Art Search.

“An attempt to help people separate wheat from the chaff efficiently.”

Traditional Prior Art Search | Recursive & Time-Taking

Prior art search is a recursive process. You begin by:

  • articulating a technical idea in the form of  a query,
  • feed it to a search engine,
  • wait for it to spit out the results
  • and then you go through the results one by one.

The relevance of results generally drops as you go down the list. So you refine your query to steer towards more relevant results, and the process repeats. 

As you would know that only a few of these results are actually relevant and the rest are irrelevant, often termed as the “noise”. It is not uncommon to see a 50:1 noise-to-relevance ratio in your results.

Going through hundreds of documents to find one relevant piece of information ends up taking the majority of your time. Mostly you are just spending time reading documents that you are going to eventually discard. It is therefore generally beneficial to be able to judge the irrelevance of a document as soon as you can. Unfortunately, most search tools put less emphasis on this part. Either they don’t help you judge the relevancy quickly or go only as far as showing some highlighted keywords. But these approaches are seldom sufficient to inform you about the document’s relevance.

With PQAI, however, we are putting a lot of emphasis on this. We believe that enabling searchers to judge the relevance of documents quickly is one of the most impactful areas where prior art search engines need improvement.

In this article, let us analyse this problem in some detail, ponder upon possible solutions, and see how PQAI aims to be of help.

Notorious Titles & Irrelevant Text

To keep things simple let’s assume we are doing a prior art search through patent literature. Patent titles are notorious for being vague and non-informative. See this patent for example – The title of this patent is – ”Method”, that’s it. This is an extreme example, I admit, but it is generally difficult to judge patents from their titles. Even abstracts, more often than not, are difficult-to-understand. In fact, abstracts may not even relate directly to your query when you are running a search through claims/description. For a lot of results, therefore, you have to judge the relevance by opening those documents in a separate tab and then going through the full text, trying to pin down the relevant sections, if any.

A typical patent contains about 10-12 pages of text. We routinely bump into patents that are longer and have 50-60 pages of text! When looking for prior art, the information you’re looking for could be anywhere within that text. Even expert searchers spend 90% of their time searching for that crucial piece within the text.

How PQAI helps in Time-Efficient Prior Art Search?

When PQAI identifies results, it goes one step beyond. It also picks out relevant parts of the documents matching your query. We call these “snippets” or “passages” – they are complete sentences or selects parts of sentences that make sense on their own. They allow you to judge the relevance of a result directly from the search results page. Thus, you spend much less time sifting through irrelevant results is reduced. You may still need to read lengthy documents but only the ones that are relevant. The ones for which the snippets aren’t sufficiently informative, but overall, the number is greatly reduced.

The figure below shows you what PQAI snippets look like.

“A head mounted device” can be described as “an apparatus that fits on a user’s head”. Or a “housing positioned in front of eyes” can be described as “device that covers the eyes like a set of goggles

A Quick Recap

While searching for prior art you need to spend a lot of time going through irrelevant results versus the relevant ones. Getting an idea on the irrelevance of the search result without having to read it all can help you save a lot of time. With the aim to reduce this time PQAI brings the query element mapping feature in it.

When you search with PQAI, each result is accompanied with a query mapping table. First column shows a part of the invention query and the second column shows the relevant text from the search result. This mapping is not just word-to-word but it’s highly contextual. Example: “A head mounted device” is intelligently mapped with “an apparatus that fits on a user’s head”.

Now, that sounds interesting, doesn’t it? Do give PQAI a try. We look forward to hearing your experience.

Do Prior Art Search Yourself With PQAI!

Prior Art Search Made Easy With PQAI

Artificial Intelligence is changing the world around you. From suggesting videos you may like, to driving cars for you. But can AI accompany you on your prior art search spree? Let’s find out.

To Pursue or Not to Pursue? – That is the question

If you are one of the inventive types, you must be having a lot of ideas as you go about your day, as if problems are just kind of waiting for you to arrive and provide a solution. You also know the power and perils of ideas. Pursue the right one and you can make a fortune, pursue a wrong one and it can lead to wasted effort.

So it is important that you pursue the ideas that are most likely to give you high returns. But how do you know in advance?

Well, there is no simple answer to this question but few loose rules of thumbs. One is that it is better to pursue ideas that are actually new and never thought of before. This is important because if you market your idea, you can also get a patent for it. If your idea is not new you won’t be able to have exclusive access to it and you may not even be able to market it.

Many inventors don’t pay sufficient attention to it. Or they assume that if an idea has not been turned into a product then they have no risk in bringing it to market. It couldn’t be farther from the truth. In fact, only a small fraction of the actual ideas that have been patented are realized in the products. Therefore, it is important to run a prior art check before you begin to pursue any idea and be sure that you would be able to patent, and thus, have exclusive rights to market it.

The Prior Art Search | Challenges

There are plenty of free resources available for you to use to run a prior art search. These give you access to thousands of patents. But navigating through that heap of documents is a task of days. Not just that, these search engines require you to create sophisticated search strings. Here is how a sophisticated boolean search string looks like:

The state-of-art patent search tools cater to those who know what to look for and how and where to look for them. But you are an inventor who might not really have a legal background. Don’t worry though, there is a prior art search engine that understands natural language and is super easy to navigate through search results. It’s PQAIPatent Quality Through Artificial Intelligence. When AI can drive cars it can surely make prior art search less complex.

PQAI – An AI Powered Prior Art Search Tool

When using PQAI, you don’t have to worry about keywords and search strings. You also don’t have to worry about using operators to sieve your results. PQAI also helps you locate prior art without a classification search. Enter your idea into PQAI in plain English. And PQAI shall present to you only the top 10 results closest to your invention. The best part is, each result shows the relevant texts from within the document matching your query. This saves you from reading the patent documents or research papers in full detail.

It’s So Easy You Can Do It Yourself

Let’s assume that your idea is to create a light-weight, portable bluetooth speaker with an in-built light that glows like a real flame together with your music.

Prior Art Search | Bluetooth Speaker shaped like a lantern

Before investing time and resources into this venture let’s check for related prior art using PQAI. Go to projectpq.ai and enter the description of this invention in plain English. We did it for you as shown below.

When we ran this query through PQAI the AI algorithm curated the top ten most relevant representative results. And at the 7th position we found a patent that was pretty close to the invention in question. It’s titled – “Portable Bluetooth Camping Light”. Presented below is the snapshot of the result. It also contains a table showing query element mapping with the relevant text from the patent document.

Here are a few drawings from the above mentioned patent document that match with our invention query.

Looking at the prior art shown by PQAI. The invention seems to be already patented by someone else. This means it might not be very wise to pursue the idea any further.

It’s time for you to look for prior art matching your invention for real. Based on the results you receive you can choose to modify your query. You can also save the results you like to view later.  We are sure that you would be surprised to see the insightful results matching your invention.

You can further modify the results by adding filters. You can filter the results based on publication date, document type and source.

How The Dataset Of PQAI looks like?

The results that PQAI curates for you are not limited to just patents. This tool gives you results that include articles, research papers, R&D, and more. PQAI’s database as of today stands at 11 million US patents and applications and nearly 11.5 million research papers in the fields of engineering and computer science. 

What really sets this apart, and allows you more time is how you consume the results you are given. The tool will provide you with representative results from different sectors that have a relevance to your idea. Further, it extracts relevant snippets and maps them to different parts of your query. This saves the time you would spend reviewing or analysing an entire document to locate possible prior art

Let’s Sum It Up

PQAI has been created after mindful research and is still a work in progress. We have taken the concerns of inventors into consideration and are continuously training the AI engine to provide even better results. Easy, curated access to millions of documents and easy search navigation make this the ideal place to begin your patenting/entrepreneurial journey. Prior art searches don’t need to be a chore anymore, especially for inventors like you! Happy inventing!

The Ultimate Guide To Prior Art For Inventors

The Ultimate Guide To Prior Art For Inventors PQAI

Inventors get so many queries like: Can I get a patent on my invention? What is prior art? Can a YouTube video count as prior art? We have prepared this guide to prior art to help inventors succeed in their patent seeking journey.

Can I Get A Patent On My Invention?

You came up with a breakthrough idea, say a cot that can put babies to sleep using a particular vibration pattern and soothing music. A lot of parents can’t catch enough sleep if their babies don’t sleep well at night. You have solved a problem that a lot of parents face. A lot of parents might be interested in buying such a cot.  You see a possibility of a great revenue stream. And because you feel your invention is novel,  you see that it has the potential to be patented.

However, there is a possibility that someone else has already come up with a similar invention and received a patent on it. Now that patent is a “prior-art” that can stop you from receiving a patent on your invention.

Can I get A Patent On my Invention? It's too late

Hope this example gave you the basic idea of prior art. In this post, we have brought to you a detailed, visual, and very clear explanation of everything you need to know about it. We have also shared how you can conduct a “Zero Budget Prior Art Search”.

What is Prior Art?

Prior art is any evidence that an invention is already in existence or publicly available prior to the filing date of the patent application. The invention does not need to be commercially available or exist physically to be prior art. It suffices that the invention has been previously described or shown to be something that contains the use of technology that is like your invention. 

So, if you file a patent without the searching for prior art and the patent examiner finds that your invention is not novel (new), you receive ‘§102 type rejection’: “Non novel or not new”.

“21.28% of patent applications got rejected over a period of ~4 years from 2017 to September 2020 because they did not meet the ‘novelty’ criterion.

There is one more common reason for rejection: ‘§103 type rejection’: “Obvious improvement over the prior-art”.

46.95% of patent applications got rejected over a period of ~4 years from 2017 to September 2020 because they did not meet the ‘non-obviousness’ criterion.

Note: Stats are based on the rejections (Final +Non Final) given by the Patent Examiners, for the US applications from 2017 to September 2020

The §102 and §103 constitute 68.23% of the total rejections. This indicates that either an examiner found a prior art questioning the novelty of an invention disclosed or an examiner combined two or more references to prove that an invention disclosed is obvious.

It is critical that inventors invest in a thorough search of past and present products and patents before they conclude on the novelty and non – obviousness of their invention.

Does this count As Prior Art?

A very similar invention is available in a video on Youtube, does this mean we cannot obtain a patent for that invention?

It certainly can depending on the similarity with your invention.

Credits: r/patents

Inventors often have queries about what counts as a prior art and if a certain public information can be the reason for rejection of their patent application. Such disclosures can definitely act as a prior art depending upon the level of similarity with your invention.

Any invention that has been publicly disclosed or made publicly available in any language or in any part of the world may count as prior art. 

It can be a:

  • product that was available for sale,  
  • an invention used commercially, 
  • printed or electronic forms of articles, 
  • publications, texts, journals, 
  • presentation at a public event, 
  • or any form of public use of the invention.

An existing product or patent is the most obvious form of prior art. Inventors often assume that because they cannot find an existing commercial product containing their invention, their invention must be novel. 

This assumption is far from reality. Inventions often never become products, yet there may be public records showing their existence. That record counts as prior art.

Does This Not Count As A Prior Art?

Generally, information that is disclosed or becomes available to the public after the ‘effective’ filing date (or priority date) of your patent application would not qualify as prior art. 

Also, patent applications that are filed after yours generally would not qualify as prior art.

#sidenote: A trade secret does not count as a prior art.

What Is Prior Art Under AIA:  §102, §103?

The America Invents Act (AIA) is a complex bill that includes a significant change to U.S. patent law The AIA relates fundamentally to whether or not an invention can be classified as prior art with arguably the most impactful change being the shift from a “first to invent” system to a “first inventor to file” system on March 16, 2013.

Section 102: First to Invent Vs. First Inventor to File

Pre-AIA Sections 102(a) and 102(e): Patents were granted using the “first to invent” system. The section provides that an inventor is not entitled to a patent if the claimed invention was already patented, described in a patent or is in public use by another inventor before the claimed invention.

For example, under old U.S. patent law, an inventor could rely on the earliest documented date of the invention and obtain priority to another inventor with an earlier-filed application. 

First To Invent Vs First To File Representation

AIA Section 102(a): Prevents a patent if the claimed invention was described in a patent or patent application filed before the effective filing date of the invention.

For example, under the AIA, the U.S. Patent and Trademark Office (USPTO) will award a patent to an inventor who has the earliest effective filing date. The earliest effective filing date is the original date that the application was filed.

Section 103: Obviousness

Pre-AIA Section 103: Prevents patenting of an invention if it would have been obvious at the time the claimed invention was made.

AIA Section 103: A patent may not be obtained if the invention would have been obvious before the effective filing date of the claimed invention.

Example: Prior-art reference (1) teaches encryption. Prior-art reference (2) teaches how to send an email. Then sending an encrypted email would not be novel. It would be ‘obvious’ because there is a motivation to send emails in a form that would allow them to be read only by the intended recipient. 

How To Conduct A Prior Art Search?

The easiest way to do the search should be like:

  • telling your innovative idea to a friend,
  • and asking the friend if he has heard or seen something like it.
  • assuming that the friend knows it all, if he says he has not heard of it;
  • your invention is new and there is a possibility to get a patent over it.

Because you just want to determine if your invention is new or novel enough to get a patent on it.

However that’s the ideal scenario and far from reality.

Free Prior Art Search Resources

For an inventor who is (often) not skilled to conduct a prior art search it can be quite challenging to do so. Although there are many free resources for patent or prior art searching available,   most of them do not understand natural language queries.  To name a few:

Besides that many times companies use deceptive language in patents to hide their IP activity from competitors. That makes it further difficult to find the relevant prior art.

Inventor’s Plea

Look at the snapshot below, we have picked this from reddit (r/patents). Clearly the inventor  tried to look for prior art in USPTO and Google patents  but faced difficulty with language and search navigation.                                                               

credits: r/patents on reddit

Challenges To Prior Art Search 

The Right Keywords (Synonyms)

“Bendable”, “Foldable”, “Flexible” are some synonyms that can be used to refer to the same aspect of an invention.  Different patent drafters would have used different terms. However you don’t want to miss out on any relevant result and hence it would be needed to take care of synonyms while searching.

The Complex Search Queries

The patents databases are a huge set of information. Thousands of results are received for a single query. complex search queries are the only way to narrow down the results. These queries are nothing but keywords arranged with a specific logic (Boolean (AND/OR) search string) to get relevant prior art results. 

The Patent Language

The patents are usually drafted in a very specific language, difficult for a person with the non-ip background to comprehend. For example: a computer might be written as “an information exchange system” to cover any other similar devices like phone, tablet etc. 

How Much Does It Cost To Get A Prior Art Search Done?

Professional Search Fees

According to upcounsel if you hire a professional to conduct an in-depth prior art search, it shall cost you anything between $1000 to $3000 based on the complexity of the invention.  

  • $1,000 to $1,250 for simple inventions
  • $1,250 to $1,500 for slightly complex inventions
  • $1,500 to $2,000 for moderately or relatively complex inventions
  • $2,000 to $3,000 for highly complex inventions or software

Government Search Fees

The USPTO fee for conducting a patent search or prior art search varies according to the entity size. The fee is less for small and micro entities, so to say it’s less for individual inventors like yourself. ($40 to $700)

The snapshot presented below is from USPTO’s website that shares complete details of patent related fees.

USPTO Patent Search Fee Snapshot

Depending on the type of patent, the fee is different: Utility, Design or Plant.

Here are quick definitions for different types of patents based on which you can decide which category does your invention fall in.

Utility Patent

It protects process, manufacture, composition of matter and a useful machine.

Design Patent

It protects the shape, appearance, patterns, design, layout or looks of the product.

Plant Patent

It protects a new and unique plant’s key characteristics from being copied, sold or used by others.

How To Conduct A Prior Art Search Yourself With Zero Budget?

To conduct a comprehensive prior art search you either need money or skill. With money you can hire an IP research firm to conduct the prior art search for you. With skill you can use other prior art search engines that require you to create sophisticated keyword search strings and go through hundreds of documents to find relevant prior art.

However if you just want to determine the novelty aspect of your invention, you neither need money nor skill.

Yes you read it right!

We would say, don’t go by our words, try it out yourself!

PQAI Prior Art Search Tool Advantages: Zero Budget and No Prior Art Search Skills Needed

A quick search on PQAI (An Initiative by AT&T ) is enough for you to determine the novelty of your invention.

Prior Art Search Using PQAI

Here is how you can conduct the search:

  1. Go to search.projectpq.ai .
  2. You shall see a search query box as shown below.
PQAI Prior Art Search Tool Snapshot

3. Let’s try a sample query. How about – “A machine learning based system to sort out the waste based on the images captured by the camera in the past”?

PQAI Prior Art Search Tool Snapshot

Now, let’s take a look at the snapshot presented above. We actually found a prior art similar to the invention query we entered.

4. The best part is each result shows the claim mapping. That means, the relevant section in the prior art document that matches with the invention query. This makes it super easy for the researcher to look for matching elements between invention and the result.

5. Each result is accompanied with the following options:

  • Save – Just like you bookmark the webpages, you can save the results. Saved results are available for your future reference.
Saved Results Section - PQAI Prior Art Search Tool Snapshot
  • Find Similar – This option helps in further refining the search results. As the name suggests you get to see 10 more similar results matching that selected result.
  • View Document – With this option, you can view the selected result document in a new tab. Example: If it’s a US patent, you will be directed to the Google patents link for the selected patent.
  • Feedback – With a thumbs up or thumbs down, you can give feedback on the relevancy of the result.

6. If this has given you a decent idea of how you can use PQAI to conduct a prior art search. Go ahead and give it a try!

Once you establish the novelty of your invention, the next step is to fill the invention disclosure form. An up-to-date invention disclosure form shall help you prepare for a meeting with a patent attorney.

Let’s Sum It Up

You don’t want USPTO to reject your patent application because someone else has already patented an invention like yours. To ensure the same it’s necessary to find out if your invention is new before you file a patent over it. The easiest and the most cost-effective way to do so is using  PQAI Prior Art Search Engine.

Besides determining the novelty of your invention, you need to check your invention for patentability. You need to make sure that your invention is a patentable subject matter.

Conducting prior art search benefits you in many other ways than just novelty determination. To name a few:

  1. Conducting a prior art search early in the process shall help you save resources which would have been otherwise used in pursuing it for patenting. As it won’t make financial sense if someone else has already patented it.
  2. When you read the patents on the invention like yours, you shall be in a better position to refine your idea. And refine it in a manner that it’s new and non-obvious.

If you have any queries around prior art search using PQAI, feel free to write to us “sam@projectpq.ai”.