A patent is a legal document that gives exclusive rights to the inventor to restrict others from copying, manufacturing, selling, or importing your invention without the inventor’s permission. Patent searching is a valuable process when it comes to patenting an invention as it saves lots of time and money of the applicants/inventors if performed before filing an application.
In order to maintain the novelty and inventive step of the invention it is imperative to conduct a prior art search related to the invention.
In almost every country around the globe, the eligibility criteria for patenting are that the invention must be new or novel, non-obvious, and have industrial applicability. To fulfill this criterion patent searching is performed by the experts.
This search examines the novelty of the invention and ensures that it is not prior art. The International Patent Offices such as EPO, USPTO, WIPO and also INDIA conduct the prior art search for the filed application during the examination procedure. If the examiner finds any similarities in the prior art then they provide objections against the invention. The applicant then has to explicate the novelty and inventive step in response to the objections.
Further, in order to avoid any substantive objections by the Examiner in the application, the best method is to conduct a prior art search of the invention/technology before filing a patent application.
Scope of Patentability Search
Scope of the patent search[1] depends on the requirement of a client or a business, such as:-
- to protect from infringing third party patent,
- to keep an eye on the developing technologies,
- also, when a company is planning for a new product,
- to lookout for mergers & acquisitions,
- to increase licensing and other monetizing opportunities,
- for normal business purpose,
- to know about your competitors,
- to know the most active inventors & applicants.
Importance of Patentability Search during prosecution
In the process of patenting an Invention, at the stage of Patent Examination, Controller, or where applicable Registrar, shall take into account the results of search reports in relation to the application and further proceed with the process of granting of a patent.
So spending a lot of money on preparing and filing an application when there is availability to find prior art that will prevent the patent from any type of rejection. For this reason, inventors and businesses choose to begin the process of patenting by paying for patent search, and the expense on a patent application is saved if knock-out prior-art is located. If no critical blockages are located in patent search then it leads to a stronger patent application.
Patent Search: Steps to be followed
1. Broad approach
Here, a search is done around the technology to cover a broad range of patents in that technology. Starting with keywords and classes on different available databases. Keywords used are generic, if it results in too many hits then a combination of keywords and classification is performed. Broad classes are used as it covers maximum patent in that technology. Google Patents gives a good start to search, followed by databases covering worldwide patents and then on individual country databases.
2. Narrow approach
Here the search is limited by title, abstract, or claim. Further combination of words and classification is performed. Search can also be restricted by inventor, applicant, date, legal status as per the requirement of the project.
A search is considered good when both the approaches are performed, this leads to obtain relevant results.
The scope of the search depends on a case-by-case basis, for example: types of documents (patents or non-patent literatures), jurisdiction, time period to be covered, whether claims and/or full specification needs to be searched, whether the search needs to cover a feature individually and/or in combination with other components of the system. Comprehensiveness of the search is based on business requirements, client demand, or budget limitations. Budget can also be a key factor in the selection of these resources. In addition, resources and databases used in each type of search vary significantly based on the technology to be searched and business objective.
Database and Search Engine Consideration
In India, INPASS, introduced in the year 2015, is the Indian Patent Advance Search System. Google Patents, Uspto, Patentscope, Espacenet, Auspat, J-Platpat, Kipris, Cipo, Sipo, Fpo, Lens- these are the free internet search engines available to all for performing a patent search in their respective country or covering all the countries where applicable. Derwent, Orbit are paid databases for the search purpose, producing relevant results covering all the countries. For Non-patent literature: Google Scholar, Science Direct, ACM Digital Library, IEEE are taken into account for searching research articles, scientific journals, magazines, conference papers.
Prior Art Search- India
Where a prior art is anything disclosed to the public or anywhere in the world by publication in the tangible form or oral disclosure, or by use of any other way, prior to the filing date, or where applicable the priority date of the application of patent. These prior arts include patents, scientific papers, journal article,
Even though above mentioned freely available search engines allow anybody to conduct a search, but a professional or technically skilled person shall be given the task for more focused search. Due to the availability of a vast amount of literature on the internet, an unskilled person cannot do justice to the search. Professionals (at S.S. Rana & Co.) understand the scope of the invention and can perform comprehensive searches in patent and non-patent literature, providing a precise and focused search report that provides clarity to the inventor and counseling to the management. A professional person knows the importance of claims and could make out the extent of similarity of one’s invention with the existing prior art.
Conclusion
In order to get a technology patented, it is not beneficial to just file a patent without even knowing whether the invention fulfills all the criteria of patentability or not. This method is not favorable for business purposes as it only ends in costing more money and resulting in the rejection of the filed patents. Patent searching also helps in finding out the competitors already existing in the market and can provide better a perspective to work around the already granted inventions. Patent search also provides the opportunity to include some unique and novel features to the invention/products to be launched in the market by comparing the already existing products.
Thus, in order to gain a competitive edge, inventors should always prefer conducting a prior art search from a skilled professional person to provide useful insights and broaden the future business perspective.
[1] https://www.sciencedirect.com/science/article/pii/S017221901630103X
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