Patent Search-A brief note

WHAT IS PATENT SEARCH

• A patent search, also known as a patentability search, is a search conducted in patent databases as well as published literature to see if any innovation similar to your invention already exists.

• Instead of proceeding with the filing, a thorough search can provide a clear notion of the patentability of the invention, if the application should be filed, and the strengths and weaknesses of the invention.

• For an invention to be “patentable”, the invention must satisfy the criteria of patentability which are listed below:

a) Novelty

b)Non-obviousness or inventive step

c)Industrial applicability

• The patentability of an invention is determined by performing a patent search, wherein patent search is a process of identification of relevant patents by using various techniques such as key word search, International Patent Classification (IPC) based search, assignee search and so on.

• On February 27, 2015, the Indian Patent Advanced Search System, or In PASS, was launched. Prior to In PASS, patent searches in India were conducted using IPAIRS [Indian Patent Information Retrieval System].

REASONS FOR PATENT SEARCH

1. A patentability assessment can help you understand whether your invention is patentable and if so, how far can it be protected.

• A patent comprehensive search reveals the prior art in your field of invention. This will come in handy while drafting the specifications.

• Knowledge of prior art helps an inventor make relevant alterations in his invention to make it patentable.

• Since the end goal for obtaining a patent is to encash commercial benefits. Hence, a patent search can also reveal companies that could be keen on obtaining a license of your invention. 

     5. A patent search not only reveals inventions similar to your invention but also the     commercial value of the invention in the economy.

TYPES OF PATENT SEARCH

1. Patentability search or novelty search: The most frequent sort of patent search is a patentability search, which produces results that assist an inventor in determining whether their invention is within the boundaries of patentable subject matter, i.e., novelty, non-obvious, and industrially applicable. A patent agent or professional will generally conduct a patentability search before or during the creation of an invention, or immediately before filing a patent application for the invention with the patent office.
2. Freedom to Operate (FTO) Search (Infringement analysis):

2.1.  An FTO analysis is also known as a clearance search or right to use search,wherein this type of search is commonly performed prior to launching an invention for the commercial market.

2.2. An FTO analysis is limited to patents that are ‘in-force’ i.e. active and does not     include patents which are abandoned or expired like the patentability search.

3.Validity/Invalidity search

3.1. A validity/invalidity search is a comprehensive prior-art search which is performed after a patent is granted. The purpose of performing this search is to determine whether a patent issued for an invention is valid or not in comparison to the prior art that was already published before the date of filing of the patent application.

3.2. The main purpose of performing this search is to either validate or invalidate one or more claims of a patent. When a search is conducted to validate the claims of a patent, it is called patent validity search. On the contrary, if the search is conducted to invalidate the claims of a given patent, it is called patent invalidity search. The procedure followed for both the searches is identical, but the outcome is based on the purpose of performing the search. Patent invalidity/validity search is mainly conducted during infringement litigation or in order to overcome the possible risk of infringement.

4.State-of-the-art search aka Prior Art Search

4.1. This kind of patent search is the broadest among the other types of patent search, wherein a state-of-the-art search is essentially a market survey which is performed to identify the existence of similar technologies in the market. This search also provides findings regarding the competitors and indicates the trend of technology in the domain of interest.

4.2. If an invention was described in prior art, a patent on that invention is not valid. Therefore, patent applications must include relevant prior art and prove that art does not apply directly to the pending invention. Likewise, someone trying to prove that a specific patent is invalid can do so by finding prior art — a mention of the invention in any publication — from before the patent was filed.

5.Patent landscape

A patent landscape is an analysis of patent data that reveals business, scientific and technological trends. Landscape reports typically focus on a single industry, technology or geographic region. The Patent Landscape is an exhaustive search that may take a month.

SOME FREE PATENT SEARCH DATABASE-

1. Google Patents
2. USPTO-U.S. Patent Office
3. INPASS-Indian Patent Office
4. EPO-European Patent Office
5. WIPO Patent Search Database

For any kind of patent search contact us at info@lexclaim.com. The article is authored by Adv.Pragati Sharma and Intern,Ms. Manmehak Kaur