Journal of Intellectual Property Rights Vol 23, November 2018, pp 243-249 Prior Art searches in Software Patents – Issues Faced Shabib Ahmed Shaikh, Alok Khode and Nishad Deshpande,† CSIR Unit for Research and Development of Information Products, Tapovan, S.No. 113 & 114, NCL Estate, Pashan Road, Pune - 411 008, Maharashtra, India Received: 15 November 2017; accepted: 24 November 2018 Prior-art-search is a critical activity carried out by intellectual property professionals. It is usually performed based on known source of literature to ascertain novelty in a said invention. Prior-art-searches are also carried out for invalidating a patent, knowing state of the art, freedom to operate studies etc. In many technological domains such as chemistry, mechanical etc., prior art search is easy as compared to domain such as software. In software domain, prior-art can prove to be a complex and tedious process relying heavily on non-patent literature which acts as a pointer to the current technological trends rather than patent documents. This paper tries to highlight the issues faced by patent professionals while performing prior-art search in the field of software patents. Keywords: Patents, Software patents, World Intellectual Property Organisation, Prior art, Search Issues A patent is a form of intellectual property. It provides The identification of the relevant prior art, comprising exclusionary rights granted by national IP office to an of existing patents and scientific or non-patent inventor or their assignee for a limited period of time literature is important as it has bearing on the quality in exchange for public disclosure of an invention. of granting process or quality of the granted patents.5 Patent right prevents others from practicing (making, Patent applications are written to show how the using or selling) a claimed invention in a particular invention differs from prior art.6,8 Thus, patent territory during the patent tenure.1 If patent professionals search for prior arts published before the information is properly searched and analysed, it can filing date of a patent application.9,10 The online provide various insights useful for formulating databases from patent offices, along with online and technology strategies, can reveal technological trends, offline literature, published papers and articles form identify emerging technologies and products in a the main source of information for prior art.5 particular domain and also competitors’ intellectual In general, prior art provides basis for different types property strategies.2,3 The patent description reveals of patent searches as suggested below:11 how to make and use the invention, while the claims State of the Art Search - identify patents for the define the scope of legal protection and provide purpose of a general review (aka landscaping) boundaries of the patent owner’s exclusive rights. Novelty - identify patents and non-patents which Hence, Patent assertion for novelty depends on its may affect the patentability of an idea/ invention claims.4 Novelty is one of the fundamental (performed before writing a patent application) requirements for patentability, therefore finding relevant prior art is a crucial step during patent Patentability - given a patent application, ensure prosecution5 as well as for granting a patent.6 novelty The main objective of prior-art-search is to identify Infringement/Freedom to Operate - identify all relevant information to ascertain novelty in the enforceable patents which cover the proposed patent application or to invalidate the originality of a products or process. claim of a patent application.7 Prior art information Opposition - identify literature available to the can be documentary technical article published in public to show lack of novelty or inventive step of a journal or some earlier patent or products a granted patent offered for sale and even prototypes of products.6 Due Diligence - analyze strengths, weaknesses and scope of IP rights. ——————— Others †Corresponding author: Email: [email protected] 244 J INTELLEC PROP RIGHTS, NOVEMBER 2018 Many techniques have been studied and software, the filings are much more than compared to recommended for efficiently searching the above other technologies (Fig. 2). Based on the worldwide mentioned prior-arts for patents. Ji and Guo12 analyse patent filing statistics from WIPO for various various patent laws in State Intellectual Property technologies, the graph below revels that most of the Office of China (SIPO) decision stating that the drug filings are in the area of computer technology which standards that are publicly available can qualify as a might be fueled by increased filings related to prior art reference. Gaff and Rubinger6 highlight that software related patents. understanding and identifying of prior art is a high The details of technology wise patent filing trend is stake challenge and is essential while writing a patent represented in the Table-1.14 application or if embroiled in a patent litigation. The Technology Life Cycle Faster than Publication Timeline authors further highlight that prior art can limit a patent In general, a patent application is not published applications claim as an invention while in prosecution, immediately after its filing and it may get published prior art can invalidate a patent. As these studies are for after 18 months. Furthermore, a quick search and generalized prior art search and not for prior art analysis based on data for patents applied and granted searches in the field of software patents. However, in US between years 2006 and 2016 for software there are some problems and concerns of prior art domain revealed that more than 82 per cent of these searches related to software patents. patents are published after 18 months from date of Prior Art Problems in Software Patents filing as shown in Fig.-3. It can be seen from the Searching for prior knowledge is an art itself,13 graph that, the number of patents published after requiring domain expertise along with knowledge of 2 to 3 years are much more than those published earlier. information sources to search from. Prior art searches However, software being a fast changing technology, are complex, exhaustive as well as repetitive tasks this 18 months lag often creates a void to search prior that require systems and procedures in place. Over art in the field of software as the technology may and above, prior art searches are required to be done become obsolete by the time application comes in in a limited time frame. In case of technological public domain. Hence searches rely less on patent domains such as software, prior art searches can be data for searching of prior art in the field of software. more complex, tedious and time consuming than Not Confined to Single Inventive Concept others due to reasons highlighted below. Prior art search in software patent is a complex Growth of Software Patents task as compared to other domains such as There is a enormous increase in patent filings in the chemistry and mechanical engineering. Software last couples of decades. This can be seen from the being inherently conceptual and involving multiple World Intellectual Property Organisation (WIPO) data technologies thus making it difficult to represent in depicted in Figure 1.14 This led to an increase in the single inventive concept. On the other hand, patent data that is available for searching. As per European Patent Office, it is estimated that there are more than 100 million patents in the world as of now and the count is increasing each day. In case of Fig. 2 — Technology wise patent filing trend from WIPO 14 Fig. 1 — Total patent filing trend statistics source SHAIKH et al.: PRIOR ART SEARCHES IN SOFTWARE PATENTS – ISSUES FACED 245 Table 1 — Technology wise patent filings worldwide from year 2000 to 2016 Technology/Year 2000 2002 2004 2006 2008 2010 2012 2014 2016 Unknown 25238 28431 21327 46912 37114 29537 30924 24319 23193 Electrical Machinery, Apparatus, Energy 68207 77772 83029 95146 100556 110667 140240 167305 181412 Audio-Visual Technology 59994 67952 78260 92336 83723 72811 71961 71949 75428 Telecommunications 45926 54064 56993 66153 65168 54162 49982 50134 51910 Digital Communication 27889 41322 49975 58707 68336 75728 89411 113825 132580 Basic Communication Processes 14159 16630 16979 16977 16523 15471 15373 15892 14990 Computer Technology 60446 86593 96371 115723 127694 121224 142653 180373 192475 IT Methods For Management 6281 26916 19126 19496 21823 22829 28367 41327 43720 Semiconductors 47056 56344 63535 71796 74378 71547 79618 80782 76742 Optics 48379 59328 66186 73318 70406 60613 61900 61569 65499 Measurement 43729 53113 57345 62045 70739 75815 92968 112249 127527 Analysis of Biological Materials 7800 11707 12481 10971 11465 11422 12240 14366 15425 Control 19653 24517 25944 26408 27965 28099 32017 42417 55206 Medical Technology 42092 55381 66143 68633 77411 77944 87881 104451 117371 Organic Fine Chemistry 39712 48148 54960 54592 55866 54253 54924 58401 61438 Biotechnology 25466 37511 37504 34034 36535 39068 42928 50010 55194 Pharmaceuticals 40476 55557 65906 72769 75732 71276 74791 90391 105785 Macromolecular Chemistry, Polymers 24166 26998 28326 27096 28250 28531 33330 40575 46760 Food Chemistry 14061 16262 19475 19837 23160 27659 34429 56620 64146 Basic Materials Chemistry 31490 34215 36869 37116 41392 44451 53841 70523 80319 Materials, Metallurgy 24243 26817 28856 28545 34208 37377 47725 57945 65982 Surface Technology, Coating 19678 23579 27494 28579