If you’ve just received a patent search report and it feels like there is a storm cloud over your invention, you’re not alone. Reading and understanding a patent search report for the first time can be daunting. Many inventors get a sinking feeling when they see multiple “prior art” documents cited against their patent application.
However, there is no need to panic. A search report is not a rejection, it is just the first step in a process designed to help you refine your application and get the strongest protection possible. Objections raised in a search report can often be overcome, and therefore it is important to keep a cool head, trust the process, and trust the advice of your patent attorney.
What is a Patent Search Report?
After filing a patent application, the relevant Patent Office performs a search for any “prior art” related to your invention. The prior art found typically encompasses existing publications (for example, websites, journals, newspapers, magazines, etc), prior patent documents, and other disclosures that might be similar to your invention. The search is a vital part of the process, as it helps you understand where your idea sits relative to the wider landscape of the particular field of technology. Remember, one of the core principles of patents is that a new patent application cannot overlap or cover something that is already publicly disclosed.
What does an actual Patent Search Report look like and how do I read it?
An example of a European search report is shown here, which in fact is the search report that was issued for one of the first European patent applications for Apple’s AirPods (RTM):
Page 1 of an actual Patent Search Report
Page 2 of an actual Patent Search Report
Now this report may seem like a big jumble of random words, letters and numbers, but there is in fact a method behind the madness. The key information presented in the search report is:
- Category: each document is given a letter that indicates how it affects the patentability of the “claims” of your application. The most commonly seen letters, which can be seen in the search report above, are ‘X’, ‘Y’ and ‘A’.
The letter ‘X’ denotes a document whose contents are relevant to the patentability of a claim or claims when considered by itself.
The letter ‘Y’ denotes a document whose contents are relevant to the patentability of a claim or claims when considered with another document.
The letter ‘A’ denotes a document whose contents are relevant to “the technological background” of the invention and not the patentability of a claim or claims.
- Citation of document: this column indicates the document(s) being cited as being relevant to the subject-matter of the claims.
- Relevant to claim: the claims stated in this column are those that are affected by the cited document.
This search report for Apple’s AirPods may appear negative, given the substantial number of documents that were cited, however this application was granted following the examination stage of the application process. In fact, this application is part of a “patent family” having thirteen (13) granted European patents, which just goes to show that a search report isn’t the be all and end all of a patent application.
What happens after the Patent Search Report is issued?
If you are looking at a patent search report that lists multiple prior art documents, that’s not uncommon, and in fact is relatively normal, as was the case for Apple’s AirPods (RTM). This is a result of patent examiners being very thorough and including anything they can find that they deem is even remotely relevant to your invention. Therefore, just because a document is present in a patent search report does not mean it will hamper your ability to ultimately obtain a granted patent.
In reviewing a search report, it is important to consider the following points:
- Analyse what is relevant: Not all of the documents listed in a search report are likely to be equally important. Therefore, identifying which of the documents disclose products/processes that are most similar to your invention should be the goal.
- Overcoming the prior art: Following a search report, it is a good idea to determine in which way the claims will likely have to be amended in order to overcome the prior art, as this will give you an idea of the protection that will eventually be offered by the patent once granted.
- Filing a response: Whilst responding to a search report is not a requirement in many jurisdictions, doing so may streamline prosecution further along in the patenting process. However, this is completely optional, and many applicants decide not to respond at this stage to save costs.
- Determine if any of the prior patent documents are themselves in force as granted patent rights, and whether your intended development infringes those earlier rights. This is a commercially critical step to undertake, as it allows you to potentially pivot your development early on to avoid someone else’s rights.
There are many routes forward following the issuance of a patent search report, and there is not one defined path that is right for each and every applicant. As mentioned above, discuss the results of the search with your patent attorney – he or she should be more than happy to give you as much advice, guidance, and strategy as required.
The mindset you should have when receiving a Patent Search Report
A patent search report is not a verdict – it’s a starting point. A “daunting” search report having a a few pages of prior art documents should not be treated as a blockade that prevents you from obtaining a patent, but instead it should be thought of as helping hand guiding you towards the realm of granted patents.
To learn more about how Albright IP can help you secure, protect, and commercialise your plant varieties and ideas, contact one of our friendly and experienced attorneys via email, by telephone: +44 (0) 1242 691 801, or using the Contact Us Form below, and they will be happy to advise and guide you.
