A patent is a form of Intellectual Property Rights (IPR) and is a statutory grant by the Government that gives its owner the legal right to exclude others from making, using, selling, offering for sale or importing the patented invention in the territory wherein patent is granted, for a limited period of time.
Invention shall have novelty, inventive step and industrial applicability in order to get a patent granted. Patent is granted to the inventor only if these three conditions are fulfilled. The way to assess patentability of the invention before filing a patent application is by performing patentability search.
Patentability search (also called as novelty search or patent search or prior art search) is a kind of patent search which is often performed to analysis novelty of the invention before filing for a patent wherein prior arts, similar to the invention are identified, analysed and compared with the invention in detail to assess novelty of the invention. This helps further to draft patent claims in a better manner. This search is also sometimes performed to plan further research by analysis of the research which others have already done. It is highly recommended to search non-patent literature (research paper publications) also in addition to patent search, especially when the purpose of search is to assess novelty of the invention.
The search is often performed by patent professionals into several paid or free patent databases by using various search techniques such as key word search, International Patent Classification (IPC) based search, assignee search and so on. Further, patent professionals use various search strategies to yield the most relevant and accurate results corresponding to a particular invention.
In order to perform patentability search, following steps shall be taken:
Step 1: Identification of novel elements of the invention
The novel features may be listed out as novel feature 1, 2 and so on. This listing helps to formulate the key words and set right search strategies.
Step 2: Formulating right key words & framing search strategies
It is important to do basic research on the invention so that it is easy to identify keywords and their synonyms to ensure that prior art search is comprehensive, and no important prior art is missed during the search.
Step 3: Performing search in patent databases
Every patent office maintains its own patent databases comprising published applications and granted patents. Some of the commonly used databases includes espacenet, google patents, patentscope by WIPO and USPTO patent database. Search in these databases is free. However, there are more comprehensive databases, which are paid. Search shall be performed in these databases to extract the relevant prior art. Searcher shall focus on key words and search string formulation otherwise you may get a very high volume of search results and it becomes difficult to screen through it.
Step 4: Screening of prior art and categorizing them based on similarity with the invention
At the time of performing patentability search, the entire patent specification shall be read with special emphasis on the patent claims/embodiments and categorised as most relevant, relevant prior art.
Step 5: Comparison of prior art with novel elements of the invention
Comparison of prior art with novel elements of the invention shall be done for each novel element and finally the invention shall be assessed for patentability.
Step 6: The invention shall also be assessed to check if it falls under category of inventions not patentable in a specific jurisdiction.
In addition to meeting 3 conditions of patentability such as novelty, inventive step and industrial application, the invention shall not fall into any of the category of inventions not patentable. In Indian patent law, section 3 and 4 talk about the inventions that are not patentable in India. For example, the inventions that relate to computer software, traditional knowledge, atomic energy or the inventions that are injurious to human, plant animal life or environment are not patentable in India even though such inventions fulfil criteria of patentability. In step 7, invention shall also be assessed to check if it falls under category of inventions not patentable in a specific jurisdiction.
Step 7: Assessment of patentability of the invention in terms of novelty, inventive step and industrial application
In order to assess patentability of the invention and write opinion on patentability of the invention, the searcher shall be thorough with that different provisions of patent law. Based on finding of above 6 steps, opinion on novelty and patentability of the invention shall be written.
Novelty search is important to be performed before taking final decision on filing for a patent. If this search reveals similar or identical prior art, which is very close to the invention, inventor has a chance to improve upon the invention to minimise the objections to the grant of the patent during examination of the patent application.
Origiin, with a skilled team of patent agents is one of the best patent companies in India offering patent services such as, patent searching and patent filing, in India and foreign countries.
Deliverables: Patentability search report is written in word document with opinion on patentability considering statutory provisions along with PDF copies of all prior arts listed
Timeline: 3-5 business days
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