A Patentability Search is carried out at the early stages of Research & Development to identify whether the subject matter is patentable or not as per the Patents Law. Moreover, the patent search is carried out when an inventor is considering filing a patent application and wants to examine a similar or an identical invention that already exists. Further, the primary goals of the patent searches are to assess the invention’s novelty/uniqueness, inventive step, and industrial applicability.

What does patentability search do?

A patentability search is used to evaluate if an invention can be patented and whether patent or non-patent literature papers are relevant to that assessment. The search aims to find any public revelation of the creative notion before the date of the invention under consideration anywhere around the globe. A patentability search is helpful before submitting a patent application since it aids in formulating a patent application strategy—the patentability search report aids in determining whether or not to seek patent protection. The patentability search’s closest prior art can also reveal any issues that may arise during patent prosecution and aid in claim construction without stepping on the known prior art.

Some key aspects need to be considered while conducting a patentability search.

  1. Understand the technology thoroughly and identify all possible inventions/applications.
  2. The subsequent questions should be considered while carrying out the patentability search.
  3. What is the patent’s central concept?
  4. What technology preceded this patent, and what were its flaws and shortcomings?
  5. How is the present invention better and different from the prior art?
  6. Make a list of all synonyms and technical terms that could be utilized and devise a search strategy.
  7. Searchers can begin with specific reasoning and a few keywords, maybe the same as those in the subject patent. Read a few patents and start building a library of relevant terms, phrases, and basic concepts.
  8. Create a chronology of technological advancements.
  9. When contrasted to now, the technology could have had a completely different name in the past. Searchers must try to figure it out and create a chronology of technological advancements.

The Know-hows of Patentability Search:

Typically the patent searching is based on the following:

  • Keyword strings
  • Assignee
  • Patent Classification
  • Inventor
  • Citation
  • Date or the combination of any of the above

Well, Begun is Half Done!

The doorway only begins to open even with the best keyword combination. To do a thorough search, the searchers must go above and beyond. For instance, there should be manageable results to examine and determine pertinent patents.

Always remember to use various search phrases to ensure the overall coverage of the invention’s conceivable descriptions. There must be a track of the numbers as they read the patents, identify related ones, and determine the respective classification corresponding to the type of invention the searcher is looking for.

Any successful search must rely on classification searching. While the classification system is helpful, it’s important to remember that patents are classified according to the Patent Office’s discretion. A thorough search is required to determine the correct classification to ensure that the searcher is familiar with how inventors and patent attorneys classify particular inventions, features, scientific principles, and concepts. Only until the searcher has a general understanding of all possible descriptions can they search the classification systems meaningfully.

What is a state-of-the-art search vs patentability search?

  • State of the art is everything, including patents and non-patent literature, that falls in the public domain. So basically, the state-of-the-art search is a synonym for prior art. Further, the state-of-the-art search contains similar search results relevant to the present invention. But, it is entirely different from the patentability search.  
  • It is decisive in determining whether an invention is patentable in terms of novelty and inventive steps. Sometimes it’s referred to as a “collection” search.
  • What should a Patentability Search Report contain?
  • Search approach or methodology Background of the invention and important innovative aspects to be mapped.
  • Categorization of Reference documents.
  • Result or conclusion of comparing the invention’s properties to those disclosed in the prior art.

One Wonder-story!

The classic narrative about the need for patentability search is frequently given concerning Kryer’s application (App. No. 5428) for a Dutch patent (NL 6514306) titled “Method of Raising Sunken or Stranded Vessels“. According to the patent claim, floating bodies are put into a sinking vessel four via tube three from a salvage ship 2. This application was turned down.Title According to the tale, the Dutch Patent Office discovered an old issue of Donald Duck magazine that featured the same innovation. The application was denied because a patentable invention must be novel.

The Donald Duck story The Sunken Yacht (by Carl Barks) from 1949 depicts Donald and his nephews elevating the sunken ship by filling it with ping pong balls squeezed through a tube. Because ping pong balls are buoyant bodies supplied to the yacht through a conduit, the Donald Duck episode reveals the exact mechanism that the patents allege.

As a result, the Duck narrative must be considered novelty-destroying prior art: any Patent Office would have rejected Kryer’s patent application (App. No. 5428), patent (NL 6514306) titled “Method of Raising Sunken or Stranded Vessels” based on the anecdote. It’s still unclear whether the Dutch patent office used this paper as prior art for rejecting the patent application. Unfortunately, the court files have been destroyed, and the Dutch patent attorney who defended the inventor died several years ago. 

Take away: 

  • There are several advantages of patentability searches.
  • First and foremost, a proper patentability search will ensure a high probability that the patent in question is granted. Your claims can manoeuvre around existing patents if you have a good understanding of the technical landscape. This early investment results in a more robust patent when your patent is granted. Moreover, a patentability search can be used to defend your organisation against an infringement claim later in the life of your patent. Your meticulous investigation demonstrates that you were serious about patenting new technology.
  • Secondly, patentability searches can help define patent claims’ protection scope by identifying the nearest prior arts. This minimises the necessity of office actions and claims changes, and this could potentially result in a reduction in prosecution time.
  • It reduces the chances of rejection of the application.
  • It is instrumental in improving inventions – Patentability searches allow an inventor to use the results better to comprehend the current state-of-the-art in their field of research. This helps to determine the scope of future studies.
  • Patentability Searches can help you save your time, money, and resources to implement innovative ideas.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

  • Title

    Abhishek is an intellectual property Attorney. He specializes in the registration and maintenance of patents, designs, trademarks, and copyrights. He regularly assists companies in relation to crucial technology issues. He also helps organizations or individuals to develop patent portfolio management strategies for exciting new inventions and processes. Abhishek has past work experience with reputed firms like SaiKrishna and Associates Advocates, L.S. Davar and Co., Masilamani Law Partners, and Ripple IP Services (NCR).