Patentability searches are conducted to confirm the patentable nature of the invention before applying for patent protection. For a patent grant, an invention has to fulfill the three criteria of Novelty, Non-obviousness, and Capability of industrial application. We carry out extensive patentability analysis to help determine whether the newly conceived invention is patentable over the existing prior art or not. A patentability search involves searching for the prior art, which includes all the published patent applications, issued patents, and all other non-patent literature.
1. Our patentability/novelty search strategy includes:
- In-depth study of Invention Disclosure given by the Inventors / Clients.
- Identifying the key features from the Invention Disclosure.
- Framing Technical Keywords strings based on key features.
- Carrying out an exhaustive search based on all the Keywords, Patent Classifications Codes, Inventors/Assignees Names pertaining to the invention.
- Analysis of all the results obtained based on the above searches.
- Preparing the Final Opinion and report for the required invention.
1. Why to opt for a Patentability Search?
Firstly, the search provides 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 prior art is found that can negate possibility of patentability of the invention, the expenses on patent application as well as further developmental expenses on an activity where no legislative protection is possible can be saved. Indeed we have saved many tens of thousands of dollars for 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 priority date, as claimed by the inventor, and is the date the inventor has first filed 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 skilfully draft the patent application in a manner that distinguishes it from the art, thereby improving the chances of the invention obtaining patent protection.
2. Is Prior Art Search mandatory?
Legally, there is no requirement of a mandatory 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.
3. Can't 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 for the reasons discussed in the introductory section, it is highly recommended to get a patentability search done by professionals with relevant experience and skills.
4. What does an Inventor need to provide for Patentability Search?
The inventor and the search team needs to work in close sync with each other to have a successful patentability search partnership. The inventor needs to provide detailed information regarding his 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 K&K/IIPRD have a developed infrastructure for that. All such efforts enable the search team to focus on what is really important and critical and leave out aspects that only add to the irrelevant /unnecessary/not useful.
5. 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 patentability searches. We have access to such databases that allow us to access patents/patent applications filed worldwide. Such databases have their own syntax for searching the massive amounts of information contained within and only skilled searchers can efficiently search them. Our search teams are continuously trained in searching databases. That, coupled with our ongoing experience helps us to find arts that may not be easily available elsewhere.
6. 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 so, 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 in nature. For instance, an inventor granted a patent in the USA can stop others from making the same invention in the USA. 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 granted in the USA will serve as prior art if they attempt to do so.
7. 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 on 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.
Non-obviousness (also termed as an inventive step) requires that an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. It seeks to answer the question whether the invention is an adequate distance beyond or above the state of the art”. The expression “inventive step” is predominantly used in Europe, while the expression “non-obviousness” is predominantly used in United States patent law. The expression “inventiveness” is sometimes used as well.
As can be appreciated, while the basic principle of non-obviousness determination is the same across different jurisdictions, its assessment is not a precise science and varies from one country to another. This is where the assessment of a search team, with years of experience in similar technologies, can be invaluable.
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 limited 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 literally read on the technology and the technology generally does not infringe the patent with respect to 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.
8. What are the databases we use for conducting Patentability Searches?
We have access to many databases for a comprehensive patentability search. Many of them are paid. Each database requires a good knowledge of its strengths and weaknesses, appropriate searching syntaxes, etc. It is quite possible that a prior art may not come up in a search done in one database but in another, it may come up as one of the first results, due to different search algorithms of different databases. Hence having access to many databases enables us to perform very comprehensive searches. The databases we regularly use include :
- QUESTAL ORBIT
- THOMSON INNOVATION
- GOOGLE PATENTS
9. 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 in fact 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 in fact 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
- FREEFULL PDF