Patent protection may be granted for an invention that is new, useful, nonobvious and directed to patent eligible subject matter. Accordingly, it is often beneficial to conduct a prior art search to determine whether an invention may be eligible for patent protection. Prior art includes information that is available to the public in any form prior to the “effective filing date” of a claimed invention. The effective filing date of a claimed invention in a patent application corresponds to the earliest of: the actual filing date of the patent application; or (2) the filing data of the earliest application from which priority is properly claimed.See, e.g., MPEP § 2152.01. Moreover, the effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis.Id.
Specific prior art activities and documents that will preclude the grant of a patent on a claimed invention, and exceptions thereto, are set forth in U.S.C. § 102(a) and § 102(b), respectively.
Prior to performing a prior art search, it is important to have a clear understanding of the invention to be claimed, as well as the technology area to which the invention belongs. To gain an in-depth understanding of the invention to be claimed, more is required than merely reading the particulars thereof. Rather, a true understanding of the invention may be achieved by being able to discuss the inventive concepts in your own words.
After gaining a thorough understanding of the invention to be claimed and its applicable technology area, it is helpful to distill the invention down to general and specific concepts, which may be used as search terms during the prior art search. These search terms may next be entered into various search engines to determine the existence of potential prior art. Common search engines include: Google Patents, Google Scholar, USPTO public Patent Application Information Retrieval (PAIR), Espacenet, LexisNexis, IEEE Explore, printed journals in libraries, etc.