Narayanaswamy (Bala) Subramanian, Associate Vice President of Products at Netscribes, discusses the inside-out of why conducting a prior art search holds value for innovators in an uber-competitive landscape.
For innovators, it is always a question of balancing the known versus the unknown for a host of issues. These include identifying if a solution developed is indeed innovative. To protect the solution, it is crucial to benchmark it against competing ideas and realize its commercial potential. But why bother about competing ideas in a dog-eat-dog world one may ask? The answer lies in understanding the concept of prior art search.
‘Prior art,’ refers to evidence existing in the past, specifically at the time of developing something new. The word ‘art’ here can refer to public documents such as patent and technical publications (scientific journal articles, conference papers). However, the extensive scope of the ‘art’ includes newspaper articles, web forums, websites, products, marketing content and traditional knowledge. Punitive damages for infringement, copying, or commercializing a protected idea (core IP enforcement issue) would be a deterrent for weak innovation. Whereas, effective IP protection mechanisms would block competitors from copying novel ideas.
Are competing or well-explored ideas not considered novel or new? How can prior art search resolve state-of-the-art versus cutting-edge nature of scientific work?
Bala: As a scientist or researcher, you conduct preliminary literature research and survey not only to understand the work done so far but also to identify the existing gaps or problems that remained unsolved. This is where prior art references prove to be crucial.
In an application or product development role, a researcher must address additional concerns to not only make the end-result significant but also meaningful in the long run. The focus is on unresolved scientific and technical challenges which hamper the realization of a novel idea. However, all of this would only be possible by following a mutually exclusive but collectively exhaustive prior art search. Objectively outlining the novel ideas and their true extent/potential becomes significant.
What is the role of commercially available technologies and platforms technically similar to the potentially novel ideas?
Bala: If there is evidence in any form that the core concepts or your idea or invention are already described or pre-exist in products available/accessible to the public at large, your idea or its perceived application to a certain extent may not be patentable.
To ensure patentability, what is critical about benchmarking novel ideas against existing products?
Bala: One could defend and argue that an innovative product/solution developed is indeed new and could have not been thought of before or guessed/anticipated by any of the literature or other references identified. However, the concept of prior art search is such that a person with average skills in the art (referring to the technical field of the novel idea) should be able to perform the invention as described. This, in turn, becomes the true litmus test that absolves the apocryphal, mythological, or fictional innovation origin in light of the identified prior art.
Also, the most critical aspect here is to use and evaluate scientific reasoning based on the understanding of technical strengths of the prospective novel idea, the prior art literature, and experts’ takes on the state-of-the-art.
Therefore, the entire exercise of benchmarking makes novel ideas see the light of day by leveraging the whitespaces and opportunities in the state-of-the-art. This especially holds for the bigger mandates of defining research focus, reducing waste of R&D efforts and spending, defining strategy through IP landscaping, developing new technical solutions independently or through the aid of competitive portfolio analysis, and a critical analysis covering the aspects of freedom-to-operate/freedom-to-practice.
In prior art searches, what other aspects are essential to consider?
Bala: While we have discussed searching and retrieving prior art references, we must also recognize that every invention is to meet three non-negotiable criteria to be eligible for patent protection – novelty, utility, and non-obviousness. Of the three, we have covered novelty in detail.
In state-of-the-art evaluation, non-obviousness relates to identifying if the invention is an adequate distance above and beyond the existing technologies. It must be at the cutting-edge of research, development, or even application. Whereas, utility deals with the usefulness of the invention and demonstrable applicability. This helps evaluate if the novel idea can achieve benefits in an industrial setup and varies as per jurisdiction.
What role do patent publications play in prior art searches and establishing the ‘state-of-the-art’ concepts?
Bala: Patent publications play a crucial role in ensuring that prior art search is both comprehensive and mutually exclusive. Patent documents themselves are highly structured and detailed. However, they make prior art search more systematic and ease the comprehension of technical disclosures. Furthermore, lacking disclosures can result in patent application rejection. So, innovators need to be careful while drafting and filing for patents.
Patent applications include the latest, critical information that can help protect your novel idea from replication. A variety of patent offices develop, maintain, and assign to patent documents tech-based classifications. Additionally, these classifications can help index patent documents in free and paid databases. This increases the reach of patent documents as a source of prior art irrespective of the geographic and language limitations.
What is the importance and significance of prior art searches and IP for startups?
Bala: Developing a minimum viable product for many startups means that they identify, realize, navigate, and design or workaround the existing patent and prior-art landscape landmines. Such failures could lead to a catastrophic crash in the valuation of startups. The intangible assets’ impact is high on modern digital startups with conducive laws in the business critical US market. In countries like India and China, IP law enforcement has been traditionally weak. However, such countries have seen a surge in patent application filings among startups as well as established entities.
There is a level of confidentiality maintained around novel disruptive technology via a string of non-disclosure and funding agreements. This may have an impact on future product developments and commercial roadmaps. Thus, it is important to document oral disclosures as well while protecting the confidentiality of such closures.
Performing a prior art search is time-consuming and requires a wide range of tools and strategies. Not to forget, you must repeat the process over time to take any new developments in the field into account. Netscribes’ IP Research & Analytics solution can help you chalk out a strategic innovation roadmap based on a comprehensive analysis of patent information.
Let’s talk about your requirements.
Senior Manager, Innovation Insights and Strategy, Netscribes
Narayanaswamy (Bala) is the innovation insights and strategy lead at Netscribes. He holds an experience of over 14 years in complex subject-matters including, but not limited to, technology scouting, M&A due diligence, product & innovation roadmap strategy, prior art searches, and IP landscape analysis. Bala has been a catalyst for innovation related to products, technologies and solutions offered by marquee global brands.