The number of patents being filed is increasing every year. For
instance, in 2014-2015, around 42,723 patent applications were
filed in India. Whereas, in 2004-2005, 17,446 applications were
filed. This means that there was a leap of 250% in the past ten
years. Does this mean that nearly every patent filed is being
Not really. One must understand that not all patent applications
that are filed result in registration. The primary reasons for
rejection of an application are either-
(a) The invention is not novel; or
(b) It is obvious i.e. it does not involve inventive step.
This is where the importance of a patent search lies. Conducting
a patent search helps an Applicant understand if his invention is
patentable or not.
What is a Patent Search?
A patent search or a patentability search is a search conducted in
patent databases as well as in the literature available to check
whether any invention similar to your invention already exists. In
other words, it evaluates your chances of getting a patent grant.
Therefore, instead of going forth with the filing, if one conducts
the patent search, one can get a clear idea about the patentability
of the invention; whether the application should be filed and the
strengths and weakness of the invention.
Why Conduct a Patent Search?
Filing a patent is an expensive process. The official fees (statutory fee) for a basic
patent filing can be anywhere from INR.5,600 – INR.28,000.
Besides the official fees, the fees of the attorney or agent also
need to be considered. Imagine spending money on trying to get a
patent, only to find out that your invention was never patentable!
A patent search avoids this situation.
Besides financial reasons, there are several other compelling
reasons for conducting a search before filing a patent application
in India or globally.
1.A patentability assessment can help you understand whether
your invention is patentable and if so, how far can it be
protected. For example, computer programs, per se, are non-patentable
but computer programs that aremanifested in a useful waycan be
2.A patent search reveals the prior art in your field of
invention. This will come in handy when drafting the patent specification. The
knowledge of prior art will help you determine if your invention
has any value addition over the prior arts. This will reduce the
chances of rejection by the Patent Office.
3.If your invention has no value addition then understanding the prior art will help you refine your
invention so as to make it patentable.
4.The patent search can also reveal certain companies who are
keen on obtaining patents in the field of technology relating to your invention. In such
cases, it gives you the lead on which companies to contact for
licensing of your invention.
5.Ordinarily, every Applicant wants his patent to become
commercial and therefore a source of finances. A patent search not
only reveals inventions similar to your invention but also the
commercial value of the invention in the economy. Based on this you
can determine the commercial value of your invention.
6. Another important reason for conducting a patent search is
that while applying for a patent, the applicant needs to describe
his entire invention. Even if his patent gets rejected, his
application would be considered prior art, open for all to see.
This means that competitors can get free access to his hard work. A
patent search helps avoid such a situation. Even if your invention
is not patentable according to law, you can use it as a trade
secret and gain revenue.
Despite the fact that free patent databases allow anybody to
conduct a patent search, it is important that a person skilled in
conducting searches be given the task. The reason being, patent
searches involves tedious, repeated searching through various
patent and non-patent literature. An unskilled person would not be
able to do justice to the vast amount of literature to be searched.
Furthermore, a skilled person understands the importance of the
claims of a patent. The claims of a patent are of utmost importance
when a similar patent to your invention exists; in such a case, one
needs to analyze the patent claims to determine the degree of
similarity between the two.
Furthermore, a skilled person would be able to build on the
strength of your patent or on refining your patent so that it does
not infringe other existing art. A non-skilled person may not
understand these concepts.
Professionals at Intepat understand the realms of patent searches and conduct comprehensive
searches in patent and non-patent literature and also provide
counseling on the management of patents.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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