What is Patent-ability Search? How Patentability Search (Novelty Search) helps to determine the patentability of your invention?
We at Singhwal perform Patentability Searches to help determine whether your inventions are eligible for a patent, and we also provide a detailed overview of any required modifications to make your invention eligible for a Patent.
Inventor(s) come up with many ideas in a day to day research and development work. Everyone knows that research activities require more expense. In addition, it is also important to highlight about time consumption for development of particular activities. Hence, it is necessary to sincerely evaluate the patentability of the invention at the beginning itself. In case, the idea appears to be patentable then a patent application can be filed as early as possible. If the idea is not patentable then necessary modification may be carried out thereby the idea becomes patentable invention. Otherwise, based on the patentability report the investor or management can avoid filing a patent application for the idea in order to make a correct business decision and to save huge money which is required for filing and prosecution of the patent application.
It is always recommended to go for a Patentability Search as it helps in saving financials as well as effort. We at Singhwal have a highly skilled Patent Analysis Team who perform well-researched searches using both paid and free patent databases. Our IP Analysts have more than 10,000 hours of experience in patent searches pertaining to different technology domains which include mechanical, chemical, electrical, electronics, telecommunication, civil, metallurgy, computer science, IT, Software, Aeronautical, etc.
What is a Patentability Search (aka Novelty Search)?
A Novelty Search or Patentability Search is conducted in the early stages of Research & Development. This search is conducted when an inventor is interested in applying for a patent and wants to determine whether a similar or identical invention already exists. The main aspects that are targeted in a patent search are to provide opinions on Novelty/Uniqueness, Inventive Step and Industrial Applicability of the invention.
Novelty searches have no date constraints on prior art, in other words, any form of relevant reference which is found, even if it dates back to 50 to 100 years ago, is still subject of an anticipatory document and shall be novelty hitting. The anticipatory documents and prior art references include both patent literature and non-patent literature.
Non-patent literature includes a wide variety of documents like newspapers, scientific journals, thesis, comic strips, documented traditional practices and know-how, and many such publicly available and documented subject matters. An enhanced for of Novelty search which further moves to establish patentability of claims are referred to Patentability search and focuses not only on anticipation rather on obviousness criteria too of patent claims. Sometimes, Novelty searches and Patentability searches are referred to as Prior-Art search.
Steps involved in Patentability Searches:
A detailed Novelty Search executed by us involves the assessment of understanding each and every element of the invention and co-relating each of these elements of the prior art that is identified. In a novelty search, we provide a detailed report based on the different forms of disclosure of the matching elements with respect to the invention in question.
In international search reports, some prior art documents are categorized as “X” documents. These documents are of highest relevance to the invention in question, and as mentioned above, such documents match each of the elements of the invention. For novelty searches conducted by us, we use similar categorization to bring out “X” documents which may directly affect the novelty aspect of the invention.
Strategies we adopt in Patentability Searches:
For a Patentability search, we incorporate a different set of strategies which also involves the process of combing a set of prior arts to match the elements or aspects of the present invention.
Each prior art reference may contain the mention of one or two elements of the invention, and by combining these references we give a detailed understanding of how a set of prior art documents are related to the invention in question. With respect to international search report, another category that is relevant for this type of search is the “Y” Category where the prior art is partially related to the invention in question and combing these documents with other “Y” documents may show the absence or presence of novelty and inventive step.
In Patentability search reports we provide documents that match both X and Y Categories.
How we prepare Novelty Search Reports:
As per the international searching reports, the prior art documents or reference documents are categorized into ten different categories based on the type and level of relevance to the invention in question.
In our search reports we provide mostly “X” and “Y” category documents and in specialized cases, we also provide documents which fall under other categories. A Patentability/Novelty Search report will also help in drafting a patent specification in an efficient manner as we are aware of the available patent/Non-patent literature which mentions specific aspects that may be relevant to the invention in question.
It may also help to identify and define the inventive and novelty aspect of the invention of the new product or process over the prior art available in the public domain. As understood by the above description, having the right sources to conduct these searches is an essential aspect. We conduct patent searches using both paid and non-paid sources, depending on the strategy and type of search being conducted.
It should be noted that there is no language restriction and geography restriction for the prior art disclosure. The invention disclosed anywhere in the world in any languages before the cut off date is considered as novelty destroying prior art.
It is important to search English and non-English literatures in order to prepare a complete patentability report. Our report preparation includes translation of non-English literatures.
Non-paid sources provide ample prior art documents from all sources but organizing the data in a manner that is understandable may be challenging. Therefore the use of paid sources is always beneficial as a single platform will give you access to a large amount of countrywide data, which also gives several searching, analyzing, organizing and viewing options. We are well versed in using paid databases to generate specialized and qualified search analysis and reports.
Our report also contains what are the further steps to be taken in order to establish patentability of the invention, in addition to a mere list of prior arts. It may be required to carry out experiments to strengthen our argument or convince the examiner. These kinds of suggestions are also a part of our patentability search report.
Advantages of Patentability search:
It primarily save the cost and time spend for the research and development activities by making the decision in view of the patentability report if the research activities to the invention can be continued or modified or stopped. Therefore, the resources can be utilised properly.
Based on the scope of prior art disclosure, the claim of the current invention can be drafted in broad scope.
It should be noted that the prior art disclosed during the patent prosecution is usually considered by the examiner at the time of prosecution and the patent claim is granted once the examiner convinced that the claim is patentable over the prior art. At the time of litigation, if the defendant brings his invalidation argument based on the same prior art which is cited during the prosecution then the invalidation argument will become weak. This is because, the examiner already considered the same prior art and granted the claim.
Patentability report helps the applicant to submit the list of known prior art to him at the time of filing a patent application in order to comply with “duty of disclosure” requirement in the USA. The applicant can use the prior arts mentioned in the patentability search report.
It helps to comply with the provision called “prosecution estoppel”. During the prosecution, if a claim is amended based on prior art rejection then the claim scope is limited to the amended element only. The scope would not extend to similar elements used by competitors. The applicant is estopped to avail the broad scope of the claim in future due to the amendment during the prosecution. Therefore, patentability search report helps to understand the scope of the prior art accordingly the claim can be drafted at the initial stage thereby to avoid any amendment in the claim during prosecution.
Let’s explain with an Example:
One of simple examples in the patentability evaluation is discussed herein. The invention is related to tungsten filament. The prior art is related to a bulb having metal filament. Here, in view of the prior art the examiner will raise an objection. Therefore, we advice our client to include what are advantages associated with the invention tungsten filament when compared to metal filament in the specification. In addition to providing a mere patentability report, we do advice our client that how to modify the invention in order to get a patent. We provide detailed comment about the scope of the prior art. We compare the claim and the prior art element by element basis to establish novelty requirement. Also, our report contains comments about how the invention involves an inventive step in view of the prior art(s).
In such a situation a Patentability search would be conducted in a strategic way to concentrate on aspects of inventive step, as the other two aspects of novelty and industrial applicability is satisfied. Documents which prove for or against the presence of inventive step will be the main objective of the Patent Report. The process that we follow for our Patent search projects involves a searching team of 3 to 4 people discussing each case in detail, to strategic a plan of action for the search. The search is then conducted on both paid and unpaid sources to get the closest matching prior art document.
We then review and analyze the results to categorize the relevance and then provide a detailed report. This report is then assessed by our analysts to check for the quality and relevance and a viable conclusion is presented in the report
The experts at Singhwal have handsome experience in preparing patentability report. Our multi domain experts in the fields such as chemical, pharmaceutical, polymer, mechanical, electronics, software, agricultural, speciality chemicals etc have been working along with client at the time of patentability search. We first understand the idea given by our client and if required we raise a set of questions that what they feel as invention in the given subject matter or idea. Once we clear about the client’s requirement we do conduct patentability search using free and paid databases. We explore the prior arts available in non-English language as well in order to prepare a complete patentability report.
Our report also contains suggestion/ comments about the scope of the prior art and how the invention is patentable over the prior art. We also prepare the patentability report in such a way to provide information about the white space available in the literature. Therefore, the client can work on the white space as well to strengthen their business/ patent portfolio. Our experts find out a very thin line difference between the prior art and the invention. This will make a huge impact in client’s business.
Before an idea/ invention is shared with Singhwal’s expert, we have a confidentiality agreement (CDA) in place between our client and us. Therefore, the client need not to worry about disclosure of their invention to us. In addition to confidentiality agreement, we always protect our client’s idea as highly confidential and won’t disclose or share to anyone by any means.