Patentability search

A patentability search is also known as a prior art search or novelty search. Before filing the patent application, it is imperative to conduct a patentability search. It searches for prior arts and determines whether the subject matter of the invention is patentable under the Indian Patent Act or not. Prior arts are documents that exist in the public domain or are easily accessible to the public.

As someone who has been deeply involved in the world of technology and innovation for decades, we have always been a firm believer in the power of intellectual property (IP) to foster progress and protect the rights of inventors. One crucial aspect of IP protection is the patentability search. In this article, we would like to discuss how to conduct patentability searches, the contents of a patentability search report, the role of patent attorneys in this process, the patentability search cost involved, and the importance of searching non-patent literature with citations.

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How to do a patentability searches

The first step in conducting a patentability search is to define the invention’s key aspects clearly. This includes identifying the problem it solves, its unique features, and the technical field to which it belongs. With this information in hand, the search can begin in earnest.

Patent databases such as the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the World Intellectual Property Organization (WIPO) are invaluable resources for patentability searches. These databases allow for keyword and classification-based searches, enabling users to find patents and patent applications related to their inventions.

It is essential to search not only within the inventor’s home country but also internationally, as relevant prior art may exist anywhere globally. This comprehensive approach ensures that the invention’s novelty is thoroughly assessed.

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Patentability search report

A patentability search report typically includes the following sections:

Introduction

This section outlines the invention’s key aspects and the objectives of the search.

Search strategy

This part details the search methodology, including the databases searched, the keywords used, and the classifications explored.

Results

This section presents a summary of the most relevant prior art found during the search, including patent documents and non-patent literature.

Analysis

This portion analyzes the results in light of the invention’s features, highlighting the similarities and differences between the invention and the prior art.

Conclusion

This section provides an overall assessment of the invention’s patentability based on the search results and analysis.

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Role of patent attorneys in conducting patent searches

A patent attorney plays a crucial role in the patentability search process. With their legal expertise and technical knowledge, they can efficiently navigate the complexities of patent databases, ensuring that the search is comprehensive and accurate. Additionally, they can analyze the search results, providing valuable insights into the invention’s patentability and potential legal risks.

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Patent search costs

The patentability search cost can vary depending on several factors, such as the complexity of the invention, the number of databases searched, and the attorney’s fees. Generally, a professional patentability search conducted by a patent attorney can range from $1,000 to $3,000. While this may seem like a significant investment, it can save inventors from costly legal disputes and patent application rejections in the long run.

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Searching non-patent literature with citations

While patent databases are indispensable for patentability searches, non-patent literature (NPL) should not be overlooked. Scientific articles, conference papers, technical reports, and other publications can all contain valuable information relevant to the invention. By including NPL in the search, inventors can gain a more comprehensive understanding of their invention’s novelty and the state of the art in their technical field.

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Benefits of patentability searches

Patentability search provides information that helps inventors to narrow down their claims to the most optimal ones and speeds up the prosecution process. Furthermore, the search may indicate where research and development investments should be allocated if an unexplored field is discovered and also indicate existing technology that could be problematic from an infringement perspective. This is to be noted that for patentability search, the entire prior art specification is to be scrutinized and not just the claims.

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Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.

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