Novelty or Patentability search is conducted to check the patentability of any invention before an inventor makes an application for patent protection. In this process, a search is conducted in Patent Databases, Non-patent Literature (NPL) Databases that are available either for free or on paid-basis to check whether any information similar to an invention claimed by an inventor already exists. In India as well as other countries, a patent is granted only if the invention has novelty, non-obviousness, and possess industrial application. Different countries have different assessments to check the non- obviousness of an invention. Years of experience are put by our search team in similar technologies, which will prove to be invaluable here, as well as for determination and opining on novelty issues.
Before an inventor makes an application for patent protection, it is prudent on his part to check the patentability prospects of an invention since the process of acquiring a patent and taking it to a commercial-stage requires investment as well as time and effort of an inventor. Patentability search reports are drafted by our search team after conducting a thorough research in Patent databases as well as Non-Patent Literature (NPL) resources, which helps a client in making an objective, clear, and evidence-based decision on moving forward on the patent registration process.
We at IP and Legal Filings (IPLF) perform an entire assessment of an invention and provide an exhaustive outline of any required amendment to make your invention suitable for a Patent.
1. Before you get started
We completely understand that an inventor is always skeptical pertaining to the confidentiality of his invention. A non-disclosure agreement is signed by us and the client before we start any process to give complete satisfaction and assurance to our clients that their invention will remain confidential with us.
2. Conduct of search by our team
Once the inventor shares the detailed information of his invention with us, our team devotes their time to understanding the invention so that a foundation can be prepared for various assessment strategies conducted by our team on the invention. Our team conducts a search from every possible aspect to check the prior art information and patentability of an invention.
3. Result of the assessment
After conducting an in-depth search, our team prepares a report outlining its detailed analysis that will for sure clear all the doubts of the inventors/clients related to the invention. For the interest of our clients, our years of experience in various patent fields are important.
4. Opinion of our team
Based on the search analysis report, our team presents its winning approach to the client as to whether the inventor should proceed with the patent filing or not since the process of patent protection may cost a fortune to any person.
- Applicant Details and Identification
- Invention Disclosure Form (IDF)
- Proof of Concept about the invention
- Desired Geographical Protection for the Invention
1. Is conducting a Novelty/Patentability Search a mandatory requirement?
A professional patent search is not mandatory but is highly recommended before the filing of a patent application. It saves a lot of time, money and labour that may otherwise be invested in the future during the process of patent registration/examination, especially if there are clear documents in the public domain that disclose the invention. Patent registration process involves a lot of time and money both, and therefore it is better to be aware of the invention’s patentability and scope.
2. Is providing information about the invention safe for carrying out the search?
At a general level, it is surely not advisable to disclose any information about your invention. Such disclosure to a third party can post a huge risk as a patent cannot be registered/granted once the subject matter on which it is based becomes public before the date of filing of a patent application. On the other hand, as prior art search is also very important, carrying out a novelty search with the consultancy of a professional service provider is highly advised. Therefore, it is necessary to sign a non-disclosure agreement before providing any information regarding your invention to any patent attorney/professional.
3. Why to opt for a Patentability Search?
Firstly, a patent search provides deep insight as to the scope of patent protection that may be granted. Fact is, an inventor is not a patent professional and views his invention from his perspective/biases. However, if a prior art is found that can negate the possibility of patentability of the invention, expenses on the patent application as well as further developmental expenses on an where no legislative protection is possible can be saved. Indeed we have saved many tens of thousands of dollars for the inventors. Prior art (also termed state of the art or background art) in most systems of patent law, is constituted by all information that has been made available to the public in any form before a given date (known as a priority date, as claimed by the inventor, and is the date the inventor has first filed An application claiming the invention with relevant government authorities) that might be relevant to a patent’s claims of originality. If an invention has been described in the prior art, a patent on that invention is not valid.
On the other hand, if no serious roadblocks to the patentability of the invention are found after a professional search, the patent search can and will lead to a better, stronger patent application and likely a smoother application process. Secondly, the search results aid the patent attorney in drafting the patent application of the invention properly. For instance, if art similar to an invention is found, the patent attorney may still be able to skillfully draft the patent application in a manner that distinguishes it from the art, thereby improving the chances of the invention obtaining patent protection
4. What are various types of Patent Search and their purpose?
- Freedom To Operate Search
- To know possible infringement before the launch of a product.
- To know territories where an infringement may be construed and hence product commercialization may get impacted.
- Novelty & Patentability Search
- To provide an analysis of an invention concerning patentability aspects.
- To evaluate the invention disclosures.
- To assess the inventive merit of the proposed invention.
- To provide clarification as to whether or not to file a patent application.
- To distinguish between the state of the art and inventive step(s).
- Prior Art Search
- To identify state-of-the-art technology concerning patentability.
- To generate ideas for R&D.
- To reduce the R&D investment significantly.
- To develop new technical solutions to problems.
- To evaluate specific technology.
- To update new technological trends.
- Validity/ Invalidity Search
- To Invalidate a Patent when threatened with infringement.
- To Prepare for Patent Enforcement.
- To aid in Patent Licensing.
- Patent Landscape Search
- To evaluate technology .
- To detect Technology white spaces (gaps in technology wherein a new invention may be positioned).
- To determine who the technology leaders are and monitor their IP strategies.
- To evaluate the and weaknesses of patent portfolios.
- To determine the innovative focus of companies.
- To determine the technological positioning of companies and chronological changes therein.
- To determine the filing trend of companies in a technology domain.
5. Is Prior Art Search mandatory?
Legally, there is no requirement of a prior art search before filing a patent application. Neither the Indian Patent Office nor a Patent Attorney requires it. In case an inventor is sure that the invention will pass the patentability criteria, he/she can skip the patentability search and directly go for patent application filing.
However, even though the patentability search is not mandatory, it is recommended because of reasons elaborated above. Particularly, if the inventor is not sure whether his/her invention passes the patentability criteria and/or if any earlier prior art search (that may have been conducted by the inventor himself/herself) was exhaustive.
6. Can an Inventor do Prior Art search himself?
Many free databases are available on the Internet and the inventor can search those himself/herself. However, the fact is that a professional patent search is a highly complex art in itself and requires thorough experience in understanding the nuances of patentability and the ability to approach the invention without any biases. Considering the complexities involved in conducting the search and high subjectivity in determining the obviousness criteria for patentability, and the reasons discussed in the introductory section, it is highly recommended to get a patentability search done by professionals with relevant experience and skills.
7. What does an Inventor need to provide for Patentability Search?
The inventor and the search team need to work in sync with each other to have a successful patentability search partnership. The inventor needs to provide detailed information regarding his/her invention disclosing how, to the best of his knowledge, the invention serves to advance the art in the relevant field. Flowcharts, graphs, images can all be used to better explain the invention. Personal meetings can be held. Virtual meetings can also be resorted to, and we at IPLF/K&K/IIPRD have a developed infrastructure for that. All such efforts enable the search team to focus on what is important and critical and leave out aspects that only add to the irrelevant /unnecessary/not useful.
8. How to search for foreign patent documents?
Given that IP and patenting in India is still at a nascent stage, a very large number of prior arts such as foreign patent application(s) reside outside the country. International databases exist, the access to which is on a paid basis, wherein such databases are exclusively built for different patent searches. We at IPLF have access to such databases that allow us to retrieve patents/patent applications filed worldwide. Such databases have their syntax for searching massive amounts of information contained within, and only skilled patent searchers can efficiently search them. Our search teams are continuously trained on such searching databases. That, coupled with our ongoing experience, helps us to find arts that may not be easily available elsewhere.
9. Is Prior Art from other countries also considered?
Patents are territorial in nature. However, a patent granted or a patent application published in one territory is prior art globally and therefore precludes the grant of a patent for the invention globally (as well as, obviously, the first territory). This is why, as described above, a patentability search is global. For instance, an inventor who is granted a patent in the US can stop others from making the same invention in the US. For other territories, although others can make the same invention (if the invention is not patented in those other territories), they cannot patent the invention as the patent is already granted/published in the US and will serve as prior art if they attempt to do so.
10. What value does a patent search add to me?
The process of obtaining patent rights can be laborious and costly. Therefore before committing to this process, it important for you to understand the chances of obtaining patent rights for a given invention. A patentability search report provides a comprehensive analysis of relevant prior art and provides an analysis of the chances for obtaining patent rights for any given invention. Using this report, inventors/applicants can make an informed decision on going ahead with the patent application process. In most circumstances, we recommend performing a patentability search.
11. Can I search for patents in India?
Yes, you can search (published and granted) for Indian patent documents at the official patent database of India (www.ipindia.nic.in) as well as other paid databases. Recently, it was announced that the EPO patent database will include Indian patents as well.
12. What is a patent and how does it help a company?
A patent is a set of rights conferred by an authority for a limited period of time in recognition for the uniqueness and usefulness of an invention to the society. A patent provides the rights to block others from making, using, selling or offering for sale, and importing an invention. Companies can use the patent rights to attain a monopoly over the invention to the extent covered by the rights, and therefore gain a competitive advantage in the relevant technology field over other players in the market. A patent gives a company 20 years to exploit the invention exclusively, from the date of initial filing
13. Is Patentability Search different from Clearance Search (also known as FTO Search)?
Patentability Search provides an inventor with a broad perspective on whether his/her invention will pass the patentability tests. Specifically, these searches focus upon novelty or non- obviousness aspects of an invention.
Novelty is a requirement for a patent claim to be patentable. An invention is not new and therefore not patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier-filed patent application. As is obvious, the purpose of the novelty requirement is to prevent prior art from being patented again.
A clearance search or a “Freedom to Operate” search (FTO), however, has a very different objective. In an FTO search, an entity (that need not be the inventor) is primarily interested in determining whether a particular action, such as testing or commercializing a product, can be done without infringing valid intellectual property rights of others. The entity is not interested in getting a patent.
As patent rights are territorial, an FTO search is specific to a jurisdiction. For example, a patent may have been granted in the US but not in India enabling an entity to commercialize its product in India without fearing an infringement action, but preventing it from manufacturing in or exporting to the US the same product. Besides this simple example, there may be a plethora of reasons why the matter claimed in a patent/patent application could still be available for use to the entity. A patent may have been granted in one country but not in another as patent laws vary amongst countries. A granted patent may have lapsed as the patentee may have not paid regular payments required by various governments to keep a patent in force (known as annuities). A granted patent may have expired as patents are granted only for durations. Some countries may have exemptions for certain actions. For example, New Zealand allows certain types of clinical trials even if there is an existing patent. A claim of a patent may not ‘read upon’ the technology being considered. If all of a claim’s elements are found in product/technology, the claim is said to “read on” the technology; however, if even a single element from the claim is missing from the technology, the claim does not read on the technology and the technology generally does not infringe the patent concerning that claim (doctrine of equivalence being an exception). The patent claim being infringed itself may have been granted in error and can be invalidated. Claims may be construed to cover some actions and not others, for example, because of definitions in the body of the patent specification, or admissions made by the patentee while the patent application was being examined.
Further, an FTO search has a strong bearing on licensing since an entity, once made fully aware of infringement possibilities of its product/technology may be amenable to negotiating for a license with the owner of IP rights, it is infringing.
As can be seen, doing an FTO/ clearance search and rendering an opinion thereupon requires sophisticated and comprehensive knowledge of patent laws of different jurisdictions. With our decades of experience across different jurisdictions, we are fully geared up to render comprehensive FTO services.
14. What are the databases we use for conducting Patentability Searches?
IPLF has access to a number of paid databases for enabling the execution of a comprehensive patentability search. Each database requires a good knowledge of its strengths and weaknesses, appropriate searching syntaxes, among other finer aspects. It is quite possible that a prior art may not come up in a search done in one database, but in another database, it may come up as one of the first results due to different search algorithms of different databases. Therefore, having access to different databases enables us to perform very comprehensive searches. The databases we regularly use include :
- QUESTEL ORBIT
- THOMSON INNOVATION
- GOOGLE PATENTS
15. What is Non-Patent Literature? How do you search for it?
While earlier patents and published patent applications are most often cited by patent offices as prior art, any document from any source can be used as prior art and such documents are grouped under the category of non-patent literature (NPL). It does not matter in which language the document is written, in how many copies it was made available, or whether any copies were bought or read by third parties/public. The only thing that matters is that the document was available to the public before the priority date (date from which the inventor is claiming the invention). A single copy of a Ph.D. thesis available in a university library counts as prior art as would an article in a remote Romanian magazine if it can be found. As can be seen, NPL can be useful as art but such use can vary widely depending upon scope, specificity, and relevance of the information provided by a particular NPL. At IPFL we comprehensively search for NPL using various databases, some of them including:
- SCIENCE DIRECT
- GOOGLE SCHOLAR
- IEEE XPLORE
- FREE FULL PDF