Patentability Search- Coign of Vantage
"The two features that are necessary to the validity of a patent are novelty and utility, but the real test is the novelty of the invention. Novelty is quite essential, for otherwise there would be no benefit given to the public and consequently no consideration moving from the patentee while interpreting the factor related to public knowledge and public use." -Lallubhai Chakubhai Jariwala v. Chimanlal Chunilal and Co.
As mentioned in the lines by the Hon'ble High Court, it is pivotal to conduct a patenability search before filing a patent application. Let us first understand the requirements for patent.
Novelty, inventive step, and industrial applicability- are three key requirements that must be met for an invention to claim patent rights. The existing prior art in a given technology generally determines the novelty component of a given invention. The word "prior art" refers to already-known information that is in the public domain and includes publications, existing products, and any other type of public disclosure in the concerned sector.
Indian Patent Act, 1970 defines 'invention' as "a new product or process involving an inventive step and capable of industrial application." Thus, novelty is one of the prerequisites for deciding on the patent eligibility of the invention.
Section 2(i)l of the Indian Patents Act, 1970 defines novelty as 'new invention' which means "any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent application with complete specification, i.e. the subject matter has not fallen in the public domain or that it does not form part of the state of the art." An invention is considered new if it is not anticipated by the prior publication, prior public knowledge, or even prior use. When determining whether an invention is new, it is important to consider the prior art, which refers to all information that was published, presented, or otherwise publicly disclosed before the specification filing date.
Novelty should always be assessed with reference to a single prior art reference. To make sure that every new aspect of the alleged claim is revealed in the prior art document, all the elements of the subject invention must be included in a single document. It is not possible to integrate several papers to assess the uniqueness of a certain invention; instead, different records are merged to determine the inventive step.
What is Patentability Search?
A patentability search looks into any reference of any kind that might disclose an invention that is the same or similar to the one being considered and also that the said invonation can be patented or not. It seeks to ascertain whether the current invention's characteristics are coinciding with any already existing ones. This search enables the patentability searcher to discover any essential references that were present prior to the invention's critical date because any innovation may only be protected by a patent if it is novel. Just as the idea of resemblance is capricious, so too is the obviousness of an invention.
Is it legally mandated to conduct Patentability Search?
Patentability Search is not a legal requirement for a patent application; however, the inventor considers it as one of the initial steps when they commence the patent procedure. Prior to starting production, it is crucial to confirm that the invention is novel in order to ensure that the invention is both novel and patentable. By giving the patent drafter a better grasp of the invention than the existing prior art, it aids in the effective drafting of the claims in the patent.
When it comes to providing justifications for rejections, the applicant needs to be better prepared because this situation might or might not come up during the examination phase.
There are various strategies for conducting a patentability search. The search can be conducted using databases such as Google Patents, USPTO (the United States Patent and Trademark Office) search interface, Espacenet (European patent Office) search interface, and Patent Lens among others.
Some of the patentability search strategies are-
Key String Search
A key string search is a process of requesting information from a patent database using key strains created from keywords. A step-by-step procedure for conducting a key string search is required. Important points to remember are-
- Define the terms that describe the characteristics of your invention
- Find words that have the same meaning as the words you chose in the previous step.
- Construct key strings that can be used as a database search query.
If there is a time constraint, then one can begin with a narrow search query and then decide to broaden depending on the results.
The success of the keyword search will typically depend on how thorough the keywords are. For instance, if you just include the word "pen" in your search query when looking for documents about pens, you may overlook ones that deal with pens but don't contain the word. They might have said "writing instrument" instead.
One should conduct a patent classification search in addition to a keyword search if one wants to minimize the chance of overlooking some relevant results.
Patent Classification Search
Patent Classification is a hierarchical system that classifies the technology involved. Every patent application is assigned one or more classes based on the technology it falls under.
There are multiple classification systems, such as US Patent Classification, European Classification (ECLA), and International Patent Classification (IPC). Almost all patent offices assign IPC classes to the applications they receive. Hence, by using IPC Codes as a search query, one can search patent documents filed across various patent offices.
If IPC Codes are found to be extremely relevant, then query the database using such IPC codes without adding further restrictions. As in some cases, IPC Codes are a little vague and define a very broad scope. Using merely IPC codes to query the databases in such a case may produce a significant number of results. It might not always be practicable to review a significant number of patents due to time restrictions. By adding broad key phrases as a limitation to the query that contains IPC codes, the number of results can be reduced.
After completion of keyword and classification searching activities, it is recommended citation-based search to further reduce the risk of missing some relevant references.
Citation Based Search
Citation serves as a reminder of prior technology. A patent applicant or a patent examiner may cite references. Additionally, a patent document may contain both forward and backward citations (references the patent document is citing) (references that are citing the current patent document). For your search, you can take into account both forward and backward citations, also known as citations.
To complete this task, extract citations from each of the pertinent documents you discovered using the first two search strategies. Analyze the mentioned documents afterward to find other, pertinent references. If any of the citations contain pertinent references, run a citation search on all of the recently discovered pertinent patent documents.
Assignee Based Search
Take a list of assignees/applicants from the list of relevant documentation you compiled using the previous search techniques in order to conduct an assignee-based search. After that use assignee/applicant names to query the database. Be mindful that you can find yourself repeatedly reviewing the same documents. An assignee or applicant might only have a handful of patents to their name in various circumstances. If there are fewer patents, you can opt to go through every document. However, you might need to add certain limitations to the search query to lower the number of results if the assignee/applicant has more patent documents to their name.
Inventor Based Search
In order to do an inventor-based search, first, create a list of inventors' names from the list of relevant documentation you have compiled using the previous search techniques. Now one can search the database by the names of the inventors.
If new relevant documents are discovered after finishing the assignee and inventor-based search, then another round of citation search exercises utilizing the newly discovered references would make the search more thorough.
These five search strategies will collectively make the patent exercise comprehensive and increase the probability of uncovering relevant patent references. A patentability search should be conducted before the process of filing a patent. Inventions are works of art and require a lot of effort and expense so before filing, the inventor has to make sure that nobody else staked a claim for the concerned invention.
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.
