Patentability/Novelty Search

An extensive search is conducted as it provides insight as to the scope for granting patent protection. The fact is an inventor views his invention from his perspective only as he is not the patent professional. We have saved many tens of thousands of dollars of the inventors as we perform prior art search which negates the possibility of patentability of the invention, the expenses on the patent application as well as other development expenses. The most important system of the patent is prior art which includes all the information that is available in the public domain 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 is important to a patent’s claim of originality. The patent invention will not be valid if such invention has been described in the prior art.

And on the other hand, if there is no prior art found of the invention after the search, then the patent search can and will lead to a better, stronger patent application that will help in the smooth process of the patent application. Secondly, the attorneys can draft a better patent application of the invention if a prior art search is performed. For example, if similar art is found then the attorney can draft the application in such a manner that can be differentiated from the art, which can improve the chance of the invention obtaining patent protection.

Prior art search is not a mandatory process before filing the application. It is not required by both the Indian Patent Office and Patent attorney. If the Inventor is sure of their invention that it will pass the patentability criteria then they can skip the search and directly go for the patent application filing. Even though the patentability search is not mandatory, it is recommended for the reasons stated above. Mainly, If the inventor is not sure about his/her invention that it will pass patentability criteria or not or if any earlier prior art search was comprehensive.

There is a number of databases available on the internet wherein the inventors can search by himself/herself. The patent search is a highly complex process wherein experience is required in understanding the nuances of patentability and the ability to move forward with the invention without any biases. As the process of a patent search is a very complex process and it is very important to determine the obviousness criteria for patentability and for the reasons stated above in the introductory section, it is very important to get a patentability search done by an experienced person.

Both the inventors and the search team have to work together to have a successful patentability search. Detailed information regarding the inventions is required which is to be provided by the inventor, 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 for a better explanation of 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.

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.

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). For the reasons stated 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.

Patentability Search provides an inventor with a broad perspective on whether his/her invention will pass the patentability tests. Primarily, these patentability searches focus on the aspect of novelty and non- obviousness of an invention. For a patent claim to be patentable Novelty is the requirement. If the invention is known to the public before the filing date or before its date of priority if the applicant claims priority of an earlier-filed patent application then such invention is not new and therefore cannot be patentable. 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 of 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 the 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.

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:

1. QUESTEL ORBIT
2. THOMSON INNOVATION
3. USPTO
4. USPTO1
5. ESPACENET
6. WIPO
7. JPO
8. GOOGLE PATENTS
9. SUMOBRAIN
10. DEPATISNET
11. KPO

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 the 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:

1. SCIENCE DIRECT
2. GOOGLE SCHOLAR
3. IEEE XPLORE
4. FREEFULLPDF