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Why Do It?

To count as an invention, your idea must contain at least one inventive step that is completely original or novel. That means there must be no record of that same inventive step anywhere in the world, at any time in history. That’s an extremely tough test, and most ideas proposed as inventions either fail it completely, or pass with such low marks that there isn’t much point carrying on. So grit your teeth, work through this essential Project and accept the possibility that your idea won’t make the grade - though don’t give up without looking at Project 3, which covers what you might be able to do with a good idea that isn’t as original as you thought.


The Importance of Prior Art

Prior art is a legal term that when applied to your idea broadly means any evidence in any recorded form whatsoever that tends to demolish or chip away the novelty of your inventive step. In short, prior art means it’s been done before.

Point one: the scope of prior art is awesome. It isn’t limited by time or place or medium of communication. A prehistoric cave painting can be prior art. A cartoon in The Beano can be prior art. A totally unworkable and near-lunatic idea can be prior art. Basically, any thing in any form from any time in history and any place in the world can be prior art.

Point two: physical products on sale anywhere in the world represent only a tiny fraction of what counts as prior art, even if you include products no longer around. The place you have to go to find the rest – the massive underwater portion of the iceberg - is the patent system. This contains well over 50 million patents, with more arriving every day. (The European Patent Office reckons that over 80 per cent of all technical knowledge can be found in patents, and that 70 per cent of the information in patents isn’t available anywhere else.)

As an aspiring inventor you have to navigate this teeming ocean of prior art and not find anything that looks like your inventive step staring back at you.

What are the chances you’ve got something original? Statistically, not good. Is it difficult to find out? Sometimes yes, but mostly no – as long as you search effectively, which we’ll tell you how to do.

PRIOR ART HORROR STORIES

The inventor of a spanner system spent £30,000 on patent applications in several countries – remortgaging his house to pay for them, at a time when £30,000 would buy you a whole house - without first carrying out a patent search. In due course the (then) Patent Office found so much prior art that he was left with nothing worth protecting. Goodbye £30,000.

The inventor of an odour-banishing toilet bowl toured round with a complete working toilet, performing 1600 demonstration flushes before finding an interested company. Unfortunately he hadn't done a patent search because nobody ever told him he should. The company did its own search and found a ton of prior art. The idea was unprotectable, the deal collapsed and the inventor threw away his toilet.

Many inventors mess up through denial of prior art rather than ignorance of it. They prefer the dream to reality and don't want to go looking for evidence that might burst their bubble. It's a human nature thing so it happens a lot, but it would be far better for the image of invention if it didn't.


Why Novelty Matters

Originality (or novelty, the preferred legal term we’ll use from now on) matters for three main reasons:

  • If your invention isn’t novel you’re unlikely to have anything that you can turn into worthwhile intellectual property (Project 5). That puts the market value of your idea at or near zero unless you want to start a business that isn’t dependent on intellectual property (Project 3). Otherwise, everything you spend developing a non-novel idea may be sheer loss.
  • Lack of novelty is by far the biggest cause of inventors getting nowhere with their ideas. In our experience, around nine out of every ten ideas proposed as inventions can be shown, often in minutes, not to be original.
  • If your invention isn’t novel and belongs legally to someone else, you risk being sued for infringement if you develop it without their permission. (If you’re really unlucky, several litigants could sue you for different bits of the idea.)
Even if your idea seems to be novel, you may not be out of the woods.

First, your inventive step needs to be significantly novel. In other words, not just a little bit novel but a lot novel. What is or is not significant could be argued about endlessly and it’s a topic we’ll come back to in Project 3, but for example: in a world where all known mousetraps catch and kill one mouse at a time, a trap that catches ten mice, re-educates them and releases them 50 miles away will be significantly novel compared to one that simply catches and kills two mice at a time. But if the ten-mouser costs twenty times more than the two-mouser, the significance of its novelty may not be worth much in commercial terms, so significant novelty won’t necessarily gold-plate your idea.

Second, your inventive step needs to be non- obvious. If it can be argued convincingly that your idea would readily occur to someone ‘skilled in the art’ – a legal term meaning someone expert or experienced in that particular technology – you may struggle to interest anyone in your idea or get strong legal protection for it.

Lumping everything together, if your inventive step can’t pass the tests of novelty, significance and non-obviousness with flying colours your options may be so limited that there’s no point carrying on. Marketing your own product might be a possibility as long as you’re not infringing someone else’s intellectual property, but you’ll almost certainly find it difficult to get funding for a business based on an unprotectable idea.

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Prior Art Searching

We’re now going to take you step by step through two prior art search processes: a product search and a patent search. One isn’t a substitute for the other so you must do both – and do them before you do anything else, certainly before you spend serious money on your idea.

Why is prior art searching so important? There are both carrot and stick reasons.

The Carrots

  • A thorough search report - ideally presented as part of a business plan - improves your credibility rating and your chances of getting funding.
  • Prior art searching can help inform you about your idea’s market potential by revealing other ideas and products that deal with the same problem.
  • Patent searches in particular can give you clues about how much need or urgency there may be to file a patent application (Project 5). This can help you control the cost and risk of developing your idea.
  • Prior art searching is a skill in its own right. Even if your idea doesn’t get off the ground you could benefit in other ways from your new-found knowledge.

The Sticks

  • It often takes only a few minutes on the internet to find prior art. If you don’t do it others will, and you’re not going to look too smart if someone can rubbish your idea without even getting up from their desk.
  • Finding out early on that your idea is a non-starter is good. You lose nothing, learn something and live to invent another day. Finding out after you’ve wasted lots of time and money is bad, and worse if you’ve wasted other people’s time and money as well.
  • Launch your product into the market without having done or heeded a prior art search and you could find yourself sued for infringement of someone else’s intellectual property rights. Whatever happens next will be expensive and unpleasant.

You also need to heed this advice

  • Rid yourself of any illusion that what you’re about to do isn’t really necessary. Over the years we’ve had countless inventors say: ‘My idea must be original because I’ve never seen anything like it on sale’. This is dumb, though perhaps not as dumb as a more recent variation on the same theme: ‘My idea must be original because if it existed I’d have bought one by now’. Existing products do indeed need to be searched but as we’ve already said, most prior art is found in patent databases, not in shops or catalogues.
  • Start searching as soon as you’ve had your idea, when with luck you won’t care if it turns out not to be novel. Delay too long and there’s a danger that your idea will start to take over the space normally occupied by your common sense, and from then on it’s downhill all the way. This is human nature at work so beware - it can happen to you, and it’s why we advise you to consider involving a more sceptical partner in your searches.
  • Don’t ignore evidence you don’t like. The whole point of a prior art search is to go looking for evidence you don’t like.
  • An absence of prior art at the time of your searches isn’t necessarily a permanent absence. You must update your searches periodically for as long as you develop your idea.
  • No prior art search - not even the official Intellectual Property Office examination - is regarded in law as conclusive proof of novelty. We deal with this in Project 5 but you might as well know it now.
  • Patents only cover what is patentable, but what is not patentable (or not patented) can still be prior art.


  • Step 1:Finding the right keywords

    To maximise your chances of finding relevant information whether you’re searching for products or patents, you need to spend some time thinking of the right keywords or search strings to describe your idea accurately.

    If you’re not yet familiar with keyword searching, Google and other search engines have help files and manuals which can enlighten you much more effectively than we have space for here. The same applies to patent searches; most patent databases, including the European Patent Office’s Espacenet® (see later) have extensive help facilities.

    Especially when using search engines, the most obvious keywords may be next to useless if they throw up huge numbers of mostly irrelevant hits. When that happens, you have to find alternative ways of defining your idea. For example:

    • A Google search for ‘mousetrap’ produced 660,000 hits – an impossible number to search, and sampling indicated that few had anything to do with traps for mice.
    • A more refined search for ‘mousetrap AND mouse OR mice’ got the number of hits down but only to 301,000 - still an impossible number of still mostly irrelevant references.
    • Taking a different tack, ‘rodent trap’ (what else it is) and ‘trapping mice’ (what it does) produced 4260 and 881 hits respectively – not small numbers to a person of average laziness but certainly more bearable and with a good relevance rating, so here were at least two areas where we could usefully start searching.

    Another difficulty is that sometimes the keywords with the best payoff are specialist technical terms that you don’t know. For example, a search we once did for external devices that pump blood round the human body was getting nowhere until we chanced on the crucial medical term ‘extra corporeal’. Using that as a keyword led us to exactly what we wanted, but as non-medics it certainly wasn’t a term we’d have thought of to begin with. The lesson is that it may take a few ‘blind’ searches just to find better keywords to use for more accurate searches.

    Other basic keyword-finding tips include:
    • Differences in UK and US spelling – for example tyre/tire, aluminium/aluminum – can produce very different search results. So too can the use of a word as singular or plural.
    • Try all the different words for the same thing: for example sledge, sled, toboggan, sleigh; dustbin, trashcan, rubbish bin, waste bin. Again, be alert to differences between UK and US usage: for example, a nappy in UK English is a diaper in US English.
    • Look out for new terms for new technologies: for example, ‘virtual fit’ for software systems to replace trying on clothes in shops, and ‘telemedecine’ for remote monitoring of patients in their own homes.
    • Sometimes,using common misspelling as keywords - for example enviroment, infomation, proffesional - can find vital information that you might miss using the correct spelling. (We’ve just done a title-only patent search for ‘enviroment’ and found 198 patents!)

  • Step 2: Conduct a product search

    For many inventive steps product searching is less important than patent searching, so you could start with a patent search (Step 3 below) if that’s what you prefer. However, if you’re a first-time inventor a product search is probably a more comfortable exercise to start with.

    You need to find out what’s already on the market that is:

    • Similar to your idea (even if it doesn’t contain your inventive step) and/or
    • Different from your idea but tackles the same problem.

    It’s obvious why you should look for products that are similar, but why look for products that are different? The reason is that most inventions are a solution to a problem and there’s nearly always more than one way of solving that problem. Before you can make any kind of judgment about the commercial potential of your idea, you need to know about all the competition it might face. In this respect prior art searching overlaps with market research in Project 2.

    Using your list of keywords and your preferred search engine (ours are Google and the UK and US versions of Froogle), go and see what you can find.

    But don’t look just at what’s on sale right now. Past products, both modern and ancient, may be highly relevant, so check historical sources.

    Looking to the future, check the rumour and announcement mills - news groups, industry journals, the trade show and exhibition circuit - and look especially at academic research activity, as this is where many new products start out. All this is more problematic than a straightforward current product search. For example, a research project that seems to have come to an abrupt end a while back may have been abandoned – or it may be that product development is now going on behind closed doors and is at an advanced stage.

    If you don’t find one or more products that are so close to your idea that they clearly put you out of the game, collect information as you go along about all products that are broadly similar or offer alternative solutions to the problem your idea addresses. These may not be prior art but they could well be competition for your idea. It’s information you may need for later Projects, so you might as well collect it now if it’s right in front of you.

    You should also of course search offline – in shops, in catalogues, in trade and professional journals (many of which are archived in libraries but not on the internet). And if you don’t have relevant expertise or experience of your own, pick the brains of anyone who does have it – often, the older the better. There are plenty of grizzled old codgers (metaphorically speaking, and of both sexes) knocking around who have seen innovations, inventions and improvements come and go over the years and may have seen your idea among them.

  • Step 3: Undertake a patent search

    An apparent absence of prior art products is promising but far from conclusive. You now have to search the worldwide patent system for ideas that may be prior art but may never have been exploited commercially, or not in any form you’ve been able to identify during your product search.

    The sheer number of inventive steps recorded in patent literature means that you’re far more likely to find prior art here than among products. In our experience many product searches produce a glimmer of hope that is rapidly extinguished by a patent search.

    Patent searching is a skill of two parts:

    1. Finding every patent or published patent application that’s relevant to your inventive step. This is what you’re going to do in this Project.
    2. Interpreting the significance of your search findings. This is more for Project 3, so we won’t deal with it here.

    In its full glory patent searching is a professional skill with many layers of complexity, but fortunately the European Patent Office’s free Espacenet database is reasonably easy for beginners to use. Click on link below for a step-by-step guide to searching the Espacenet database.

    After some practice you should be capable of carrying out an adequate prior art search using Espacenet. However, important notes of caution are:

    • You’re not going to be as good as an experienced searcher, so unless your search findings are very clear-cut it may be better to get a patent attorney to advise you or search for you.
    • Espacenet doesn’t hold every patent in the world, though over 50 million is plenty to be going on with.
    • Even the most recent patent you find will be at least 20 months old (18 months from filing to publication, plus a couple of months to get it on to the database). In fast-moving technologies a lot can happen in 20 months, so no matter how thorough your searches, you’ll always be left with a fairly substantial ‘uncertainty gap’.
    • For some foreign patents you may find very little information on Espacenet beyond a number and title. If you find this a significant problem, it may again be better value in the long run to let a patent professional search for you. Patent attorneys and dedicated search services usually have access to other, fee- based patent databases which may hold more information about those patents.

    If, having taken a look at Espacenet, you decide it isn’t for you, go straight to Let others do your patent searching.



How Long Will it Take to Complete the Searches?

It’s impossible to say. It could range from a few minutes if your first keywords are spot on and your idea is doomed by obvious prior art, to many hours over many weeks if nothing directly relevant leaps out and you have to try different keywords or look in detail at many patents. All we can really say is that you must be prepared to spend all the time it takes to be confident that you’ve done a proper job.

The golden rules are:

  1. Your mission is to find evidence that disproves the novelty of your inventive step. Your hope is that you will fail, but in the interests of a thorough search put that to the back of your mind. (Alternatively, get someone else to search with or for you.)
  2. Assume that if you’re not finding prior art, it’s because you’re looking in the wrong places.
  3. Keep records of everywhere you look and everything relevant that you find. Download, bookmark, copy-and-paste – whatever it takes.
Try all possible angles of attack until you’re confident there’s nowhere else left to look. A demonstrably thorough and well-recorded search is essential because how else do you prove that something isn’t there? Break up your search into several short sessions if you get bored easily, but don’t give up. Walk away after half a job and trouble will brew in the half you didn’t do. Trust us. As assessors of inventions, we live in that other half.

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Project 1 Checklist

The following checklist is partly an action planner and partly a reminder of what matters. If you’re tempted to think ‘I don’t need to do all this stuff’, it may help to point out that we’ve modeled the checklist on questions professionals are very likely to ask if you want their advice, support or money. We therefore have to be stern and say that if you aim to be a respected and successful inventor, you can’t afford to duck any of it.

 
Professional patent search:
  • Who did you use (patent attorney, Intellectual Property Office etc)?
  • Summarise their findings.
 
Own patent search using Espacenet:
  • What keywords or strings gave you your most relevant search results?
  • What’s the most relevant ECLA for your inventive step and how many patents does it contain?
  • List any other relevant ECLAs searched.
  • List all patents that you consider relevant to your inventive step, either as prior or competing art.
  • List any that you can’t yet make a decision about (for example, because they’re in
    a foreign language or there’s too little information available).
  • Short-list the patents that you think pose the biggest threat to your inventive step or the claims you might want to make for it.
 
Product search:
  • List the sources you used to find information.
  • Which were the most useful, and why?
  • Give details of all products (past, present or proposed) that are relevant to your idea, either as prior or competing art.
 
Assessment of findings:
  • How confident are you, on a scale of 1 (low) to 5 (high), that your inventive step is novel and not threatened by prior art?
  • If you’ve scored below 5, what makes you think you can keep your idea alive?
  • Most ideas proposed as inventions turn out not to be novel. Can you honestly say you’ve made all reasonable efforts to find prior art?
 
Remember:
If you discover early on that your idea isn’t novel, no harm is done and you may still be able to exploit it. If however you carry on as though it’s novel, you could be heading for serious financial and legal trouble.

Next Project…..
PROJECT 2
Project 2

Competition & market potential

The key discipline of thinking of your idea not as an invention but as a business opportunity starts here.


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