Patentability Search: A Key Step before Filing a Patent

Before filing a patent application, conducting a patent search is one of the most crucial steps an inventor or business can take. A patent search involves systematically reviewing existing patents, published applications, and other technical literature to determine whether an invention is novel and non-obvious. we use patentability search to determine whether the invention is novel and non obvious.

This process helps to discover any existing technology or ideas that may be similar to your invention, which could impact the chances of obtaining a patent. A thorough patent search can save time, reduce costs, and increase the likelihood of securing patent rights by providing a clear picture of the existing intellectual property landscape.

Types of Patent Searches:

1. Patentability Search
2. Freedom to Operate (FTO) Search
3. Prior Art Search
4. State of the Art Search
5. Invalidity or Validity Search
6. Patent Landscape Search
7. Infringement Search (Clearance Search)

The most important search in the patent search process is the Patentability Search, as it determines whether an invention is new and non-obvious, these are two critical criteria for obtaining a patent.

PATENTABILITY SEARCH

A patentability search is a crucial step in the invention process that helps inventors and businesses make informed decisions about pursuing a patent. By assessing novelty, non-obviousness, and potential infringement issues, a patentability search can save time, reduce costs, and enhance the quality of your patent application. Patentability Search is also known as Prior Art Search or Novelty Search.

The objective of patentability search strategy is to establish the chance or likelihood of an invention getting a patent especially on the worldwide criteria of novelty and non-obviousness.

The purpose of a patentability search that include all types of prior art is to discover prior art and determine if the subject matter is patentable or not. Keep in mind that it save your unnecessary cost on patent preparation and prosecution.

When to Do a Patentability Search?

It’s essential to conduct a patentability search at the right time.

Do a search before filing a patent application, during research and development, or before investing in commercializing your product. Also, consider searching when developing new features.

The best time is early in development. Update your search results regularly and refine your search scope as your innovation evolves. Doing a search early saves time and resources, reduces risks and costs, and helps you make informed business decisions.

Why to Conduct a Patentability Search?

Conducting a patentability search is essential for several reasons:

• Determines Novelty: A patentability search verifies that your invention is new and doesn’t infringe on existing patents. This involves Comparing your invention to similar concepts and Analysing prior art
• Assesses Patentability: This assessment evaluates whether your invention meets patent office requirements like is it new? Is it significantly different from existing solutions? Does it fall within patentable categories?
• Identifies Risks: A patentability search identifies potential infringement risks so it helps you to Avoid costly litigation, Design around existing patent.
• Informs Patent Strategy: This determines the scope of protection, Ensures you file a strong, effective patent application.

Benefits of Patentability Search

1. Validates innovation
2. Identifies unique selling points
3. Reduces litigation costs
4. Saves filing costs
5. Mitigates infringement risks
6. Streamlines patent application
7. Enhances patent quality
8. Gains competitive advantage

Real-World Statistics:

Companies that conduct patentability search experience a 25% increase in patent approval rates.

90% of patent applications that undergo a thorough search are granted patents.

Patentability searches save companies an average of $10,000 to $50,000 per application.

Importance of Patentability Search:

1. Ensures Novelty and Uniqueness: Identifies whether an invention is novel and non-obvious, ensuring the invention meets patentability criteria.
2. Avoids Duplicate Patents: Identifies Existing Patents: Conducting a patentability search helps prevent filing identical or similar patent applications, thereby saving time and resources on unnecessary applications. This also reduces the patent office workload and costs associated with processing duplicate applications.
3. Reduces Rejection Risk: Identifies Potential Issues Early: A patentability search streamlines the application process, identifying potential issues early to avoid costly re-filings and litigation, saving legal fees and minimizing financial burdens.
4. Enhances Patent Quality: A thorough search ensures the patent application is well-crafted, reducing the likelihood of post-grant oppositions.
5. Facilitates Licensing and Enforcement: A strong patent, supported by a comprehensive search, is more attractive for licensing and enforcement purposes.
6. Compliance with Patent Office Requirements: Many patent offices, including the Indian Patent Office, require applicants to conduct a search and submit search reports with their applications.

Step-by-Step Procedure for Conducting a Basic Patentability Search

1. Understand the Invention: Begin by thoroughly understanding the core aspects of your invention. Identify its unique features, technical details, and functional elements. This will help you define relevant search terms and classifications.
2. Define Search Criteria: Develop a list of keywords, synonyms, and relevant technical terms related to your invention. Identify the appropriate patent classifications (e.g., IPC, CPC) that fit your invention’s domain to narrow down the search.
3. Select Search Platforms: Choose the appropriate databases and tools for your search. Key resources include:
   • Google Patents for a broad global search.
   • USPTO for U.S. patents.
   • EPO Espacenet for European and international patents.
   • WIPO PATENTSCOPE for PCT applications.
4. Conduct the Search: Utilize the selected platforms to perform your search using the defined keywords and classifications. Search across multiple databases to ensure comprehensive coverage. Use advanced search options to refine results and filter by relevant criteria.
5. Analyse Results: Review the search results carefully. Identify any patents or publications that closely resemble your invention. Compare their claims and technical details to assess how similar or different they are from your invention.
6. Prepare a Search Report: Document your findings in a formal report. Include a summary of the relevant prior art, how it compares to your invention, and any implications for patentability. This report will guide further steps, including potential modifications to the invention or the decision to proceed with a patent application.
7. Consult a Patent Attorney: If needed, consult with a patent attorney to review the search results and seek professional advice on the next steps. They can help interpret the findings, advice on patent strategy, and assist in drafting and filing a patent application.

Techniques to conduct patentability search

There are various techniques to conduct a patentability search and are as follows:

• International Patent Classification (IPC)
• Keyword search
• Assignee Search
• Application ID Search

International Patent Classification (IPC):

Patents are assigned codes based on their technical features and the type of invention they describe. These codes are part of a classification system that divides inventions into different categories and subcategories. This helps people quickly find and compare patents related to similar technologies or innovations. This makes it easier for inventors, companies, and researchers to find relevant patents and see what’s already been invented.

1. Keyword Search: This involves using relevant keywords that describe the invention’s features or concepts. By inputting these keywords into patent databases, you can identify existing patents or publications that may be similar to your invention. It is useful for identifying prior art in a broad, unspecific manner and is often the starting point for a patent search.
2. Assignee Search: An Assignee Search is used to identify patents owned by specific companies, organizations, or individuals. This can help in understanding the patent portfolio of competitors or collaborators and in finding prior art that might be held by particular entities, especially in cases where the innovation may overlap with known industry leaders.
3. Application ID Search: This method involves searching for patents using a specific patent application ID or number. It is useful when you already know the application number of a related or relevant patent. This technique allows you to track the status and details of a particular patent application to review prior art or ongoing developments in the same field.

In which platforms or resources should a patentability search be conducted?

Here’s a brief overview of where to conduct a patentability search:

1. Free Patent Databases
   • Google Patents: Global patent search across multiple countries.
   • USPTO (United States Patent and Trademark Office): U.S. patents and applications.
   • EPO (European Patent Office) Espacenet: European and international patents.
   • WIPO PATENTSCOPE: International patents under the Patent Cooperation Treaty (PCT).
2. Paid Patent Databases
   • Derwent Innovation (Clarivate): Professional-level patent search with analytics.
   • Questel Orbit: Advanced patent search and legal status data.
   • PatSnap: Patent search with business and patent analytics.
   • LexisNexis TotalPatent One: robust patent database that offers access to global patent information with powerful search and analysis tools.
   • Patscout: Patscout is a patent search and analysis tool designed for businesses and IP law firms.
   • Minesoft PatBase: This is extensive patent database offered by Minesoft, with global patent coverage and advanced search capabilities.
3. Professional Services
   • Patent Attorneys: Offer detailed patent searches and legal advice.
   • Patent Search Firms: Provide in-depth, tailored patent search services.

International vs Domestic Patent Search

When protecting intellectual property, choosing the right patent search strategy is crucial. An international patent search provides global coverage, ideal for innovations with international market potential, while a domestic search focuses on a specific country or region, offering faster and more affordable results.

International searches help avoid global patent infringement, inform global strategies, and identify potential issues early. Domestic searches are suitable for local market protection but may overlook international prior art. Consider your innovation’s scope, market potential, and business goals to choose the right approach. Consulting a patent expert will ensure robust patent protection and mitigate risks.

What steps should clients take to ensure that a patentability search is conducted efficiently?

• Clearly Define the Invention: Provide a detailed description of the invention, including its features, benefits, and technical aspects. The more specific and clear the description, the easier it will be to identify relevant prior art.
• Prepare Documentation: Gather any drawings, diagrams, prototypes, or technical papers that illustrate the invention. This documentation helps patent professionals understand the invention’s scope.
• Specify Key Elements: Highlight the critical components and innovative aspects of the invention. This helps narrow down the search to the most relevant areas of technology.
• Identify Relevant Technologies: Indicate any related fields or technologies that are relevant to the invention. This information can help focus the search on areas that are most likely to contain similar inventions.
• Consult with a Patent Professional: Engage with a patent attorney or agent who can guide you through the search process. Their expertise can ensure that the search is thorough and covers all necessary aspects.

Patent Search Success Stories

• James Dyson: The Bagless Vacuum
  • James Dyson’s invention of the bagless vacuum cleaner was revolutionary, but before filing his patent, Dyson conducted a thorough patentability search. This helped him identify existing patents and refine his design to ensure it was novel. His search paid off—Dyson successfully patented his invention and built a multibillion dollar company based on his patented technology.
• Elon Musk: Tesla’s Electric Vehicle Patents
  • Tesla conducted detailed patentability searches before filing its electric vehicle patents, identifying gaps in existing technology. This allowed them to file innovative patents on battery management and electric drivetrains, helping Tesla secure its place as a leader in the electric vehicle market.
• Steve Jobs: iPhone
  • Before launching the revolutionary iPhone, Apple conducted extensive patentability searches to ensure its innovative features like multi-touch technology were unique. These searches helped Apple secure patents that formed the foundation of the smartphone industry, protecting their designs and ensuring their market dominance.