Conducting an Efficient Patentability/Novelty Search

A patentability search is an important part while moving forward of drafting a patent. Before getting on to the process of patent protection, the patentability search helps the applicant to understand how effective the patent can be and what are the chances that there will be any opposition to the patent application. This helps in understanding those inventions which are very close to or which are similar. The patent is always granted on the premise that it is novel, non-obvious, and has the industrial capability. The patentability search helps to build up the inventions on these factors while letting the inventor know how the patent will play in the market.

Understanding Patentability Search

Commonly known as a novelty search or prior-art search, this search is done primarily to discover those patents which depict or constitute similarity with the patent in question. This search enables the inventor to know whether the invention he thinks of, has already been revealed in some other patents granted or published. This way the patentee will develop the idea which will help him to rethink or re-draft the patent as per the requirement. In the pursuit to search the obviousness, being a non-quantifiable measurement, the search will split into criteria such as non-relevant, distantly related, related, or relevant. If the patentability search reveals that the inventions have been disclosed by some patents earlier, then the patent specification and other aspects can be changed to not let others file any opposition. The patentability search is generally performed before the submission so that the feasibility of the same can be ascertained.

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Performing a Patentability search

As specified, the primary purpose of the patentability search is to determine the probability of the invention against novelty and non-obviousness. The inventions are not easy and entail in itself heavy investment and R&D. Similarly the patent in it consumes a lot of effort and money in the whole process. So, it is important to make sure that the claims do not match with others. There are a lot of reasons why there should be a patentability search. While not only the inventor comes to know that there are other patents in the market with almost the same specifications, this too helps the inventor to understand the scope of his invention. The scope can be broadened based on the search report. When the inventor knows the prior-art, it offers him a better understanding of the invention and to draft better claims. Similarly, knowing the prior art and then drafting your specifications will make the inventor more confident while answering the examination report and any oppositions that might occur in the due course.

It has to be made clear that conducting a patentability search is not a legal requirement and there is no compulsion to conduct it. It is conducted to ensure the novelty of the invention in question and that is why it is highly suggested that the patentability search must be done to make your case stronger.

Conducting Patentability search

For conducting a patent search, the inventor must be diligent while conducting a novelty search. There should not be any date restriction while conducting the novelty. It is commonly inferred that any invention known to date will constitute prior art. The criteria for searching must not be restricted to one jurisdiction but must be there across the globe at large. It will make a stronger case and will help in the long run. There must not be any restriction concerning disclosure in any document since all will be considered as prior art. There are cases where even a non-formal reference has been used to destroy the patentability. More importantly, the literature available in the non-English language must also be thoroughly checked upon. The inventor might need the help of some professional who is well versed with the language. IPLF with its team has provided various services to clients across the world for patentability search and that too in various languages across the world.

IPLF

The highly equipped team at IPLF provides patentability search in the patent office all over the world. The services include:

• In-depth study of Invention Disclosure given by the Inventors/Clients.
• To identify the key features from the Invention Disclosure.
• To Framing Technical Keywords strings based on key features.
• Carrying out an exhaustive search based on all the Keywords, Patent Classifications Codes, and Inventors/Assignees Names about the invention.
• Analysis of all the results obtained based on the above searches.
• Preparing the Final Opinion and report for the required invention.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back to us at support@ipandlegalfilings.com.