Patentability Search

"Empowering Your Invention's Patentability Assessment Journey"

"A Patentability Search, also referred to as a Novelty Search or Prior Art Search, is typically undertaken in the preliminary stages of product development and prior to submitting a new patent application. The objective of this search is to uncover existing patent and non-patent literature that may disclose inventions bearing resemblance, in whole or in part, to the invention under consideration"

Criteria for Patentability

For an invention to qualify for a patent, it must meet the following criteria:

1. Novelty: The invention must be original and not previously disclosed.

2. Inventive Step (Non-Obviousness): The invention should not be evident to a person having ordinary skill in the pertinent domain.

3. Patentable Subject Matter: The invention must be of a type that is eligible for patent protection.

4. Industrial Applicability (Utility): The invention must possess a practical application.

Use

An efficiently conducted patentability search report serves several crucial purposes:

1.  It aids in determining the invention’s novelty, inventive step, and industrial applicability.

2.  It supports the accurate delineation of the invention’s boundaries during the patent drafting phase.

3.  It reduces the risk of patent application rejection.

4.  It provides insight into the existing competitive environment.

5.  It yields valuable information pertinent to market positioning and strategy.

6.  It aids in averting expensive patent infringement litigation in the future.

Points to be remembered while performing a Patentability Search

1. Types of Documents to Consider

• Patent Literature (Prior Art Claims): Examination of both granted patents and published patent applications is crucial as prior claims can impact the patentability of an invention.

• Non-Patent Literature (Prior Publications): Non-patent sources such as journal articles, books, magazines, conference proceedings, and theses should be meticulously reviewed, as prior publications play a significant role in determining an invention's patentability. Information from non-patent literature is as critical as that from patent literature.

• Prior Use: Public disclosure through use, including appearances at trade shows, newspaper articles, or product labels, may affect an invention's patentability, subject to specific exceptions for a limited period (typically 12 months).

• Comprehensive Search Strategies

2. Full-Text Searches:

It is essential to conduct full-text searches to analyze all relevant details in the descriptions and disclosed embodiments of patents.

3. Patentability Criteria Analysis

An invention must be novel, involve an inventive step (non-obviousness), be industrially applicable (useful), and qualify as patent-eligible subject matter. During patentability analysis, assess:

a. Novelty against the closest prior art

b. Inventive step in comparison to what is known by a Person Having Ordinary Skill in the Art (PHOSITA)

c. Eligibility under patentable subject matter

d. Industrial applicability (utility)

4. Exploration of Alternative Embodiments

Search for closely related technologies and alternative embodiments to identify potentially less relevant documents that could reveal alternative approaches or enhancements.

5. Diverse Search Methodologies

Employ various search strategies, including concept searching, phrase and keyword searching, classification code analysis, and combinations thereof. Also, consider the publications of key inventors and competitors, along with forward and backward citation analysis, to uncover the most pertinent prior art.

6. Temporal Scope

Conduct searches without date restrictions, as any public disclosure before the filing date—regardless of when or how it was made—can influence patentability.

7. Geographical Scope

Searches should be jurisdiction-agnostic, considering disclosures made public in any location, as global disclosures affect patentability.

Sources of Information

8. Patent Publications

• Non-patent Literature: Journals, books, magazines, conference proceedings

• Public disclosures, including trade shows, newspapers, and product labels

This comprehensive approach ensures a thorough assessment of an invention's patentability, minimizing the risk of overlooking prior art that could impact the patent process.