The Importance of Prior Art Search for Patent Applications
Conducting a prior art study is crucial for patenting a technology, as it serves multiple purposes:
- Assessing Registrability
Prior art provides the benchmark for judging whether an invention is patentable. It also helps determine how to structure claims and prepare the patent document. - Supporting Patent Disputes and Valuation
Prior art serves as evidence in patent disputes and patent valuations, helping to assess the likelihood of a registered patent being invalidated. - Guiding Future Research
By understanding technological trends, companies can chart the direction of future research and development.
At Sarang IP Law Firm, we conduct thorough prior art investigations through the following steps:
Step 1: Search in the Korean Patent Database (KIPRIS)
Our first step is to search for prior patents published in Korea using KIPRIS (the Korea Intellectual Property Rights Information Service).
Because Korea ranks 3rd globally in patent applications, a large share of prior art can be found within its national database. This step is essential for obtaining reliable and comprehensive local data.
Step 2: Overseas Patent Search via Google Patents
Google provides access to the patent databases of major countries, complete with English translations and prosecution histories.
Additionally, Google Chrome’s translation features make it easier to quickly understand foreign inventions. This method is often sufficient to gather prior art data for patent registration.
Step 3: Search in Patent Databases of Overseas Offices
In some cases, the databases of countries such as China, Germany, and Japan may not provide reliable translations, which can hinder understanding.
If Step 2 does not yield sufficient results, we conduct direct searches using each country’s official patent office databases.
For countries such as China, which has a high volume of patent applications but lower database reliability, we use specialized patent search programs offered by private companies.
Step 4: Additional Study through Specialized Search Companies
When necessary, we perform an additional search using specialized patent search companies, such as WIPS, which is a patent prosecution outsourcing company for the Korean Patent Office.
Although the results are generally consistent with those from the previous steps, WIPS reports can provide valuable supplemental information and lend greater credibility to the search outcomes.
Expertise in Prior Art Search
A comprehensive prior art search requires highly specialized expertise and a significant investment of time. Key activities include:
- Preparing effective search queries
- Navigating and searching patent databases
- Reviewing candidate documents and understanding the core points of each invention
The success rate of patent registration and dispute resolution largely depends on how thoroughly the prior art study is conducted.
Sarang IP Law Firm regularly conducts Korea-focused prior-art searches for overseas counsel, both as a foundation for filings and as support in cross-border disputes and valuations.
We are glad to collaborate where a thorough Korea-focused search would support a matter.
