Patentability Search – Securing the Novelty of Innovation

R&D departments, enterprises, individual inventors, etc. can all avoid obstacles in the innovation and patenting process with the help of timely prior art detection. It functions by assisting patent applicants in locating patent and non-patent literature that might have an impact on the patentability of an invention. Because of this, an increasing number of inventors are employing patentability search services to efficiently submit and acquire patents. Failure to do a patentability search before to submitting a patent application might quickly result in unanticipated office actions and even rejection.

Knowledge of Patentability Search

A patentability search, also known as a novelty search occasionally, aids in locating the most recent prior art that has been revealed. This makes it easier to assess an invention's possibilities of being patented, particularly in terms of patentability and non-obviousness. It includes both patent and non-patent literature to find pertinent references that could constitute prior art. The inventor can choose whether to file an application or not if a patentability search reveals a similar or identical idea. Additionally, it offers a chance to alter the invention's scope in light of the discovered prior art. Therefore, a meticulous patentability search improves the quality of the patent draught and aids inventors in obtaining the greatest possible patent protection for their discoveries.

An inventor can consider the benefits of doing a patentability search prior to submitting a patent application. The same is expanded upon in the section that follows.

Search for Patentability Is Required

1. Determine whether an invention is patentable: In order to prevent wasting money on superfluous patent writing and prosecution, it is essential to research relevant previous art before filing for a patent.

2. Select the Most Effective Patent Claims: The outcomes of a patentability search provide important details for submitting the Most Effective Claims. It shouldn't be too wide to cut out pointless costs or too limited to make it unenforceable.

3. Hasten Prosecution: By lowering the likelihood of office actions, it helps hasten the prosecution procedure. Before applying for a patent award, the search is a proactive process that aids in removing similar or derived inventions. Only inventions that survive the search's examination are advanced, lowering the likelihood of pushback and accelerating the entire process.

4. Improve Inventions/Design Around: Patentability searches enable research and development teams to identify potential improvements in the innovation and develop new designs around the existing prior art.

5. Lower Total Cost and Time: The search assists organisations in repurposing time and money away from non-patentable inventions and toward patentable ones.

The search for patentability also serves as a filter to only choose the finest inventions. Benefits are especially important for firms that prioritise IP and have a robust R&D group. Companies typically work on many inventions at once and submit multiple patent applications concurrently. The United States Patent and Trademark Office (USPTO), for example, rejects a number of patent applications. For instance, the USPTO rejected 422,616 of the 895,388 applications it received and processed in 2019 alone. Such rejections can result in significant financial losses from lost investments. So it's essential to do a patentability search to determine which inventions are the most new and obscure.

To help you get the most out of the activity, the following section offers tips on doing a patentability search.

Methods for Searching the Existing Patent Database for Patentability

While conducting patentability searches on multiple patent databases, the following guidelines will help you get the best outcomes:

1. Use the Invention Disclosure Form: Almost all businesses use this technique to gather creative ideas from their R&D teams. This document, also referred to as the IDF, provides answers to various important queries, like how an invention differs from previous art documents, how it is unique, how it is superior to prior art, etc. Such responses can be extremely important when doing a patentability search because they aid in creating a thorough knowledge of the invention.

2. Prioritize Important Features to Concentrate on Important Elements: The majority of inventions have one or more features that set them apart from competing goods on the market. Using VED segregation, which divides goods into Vital, Essential, and Desirable categories, the team or individual doing a patentability search must pinpoint such features and concentrate their efforts on them. The group can then concentrate on the crucial and appealing components of the invention.

3. Create and distribute the calibration document, which provides a wealth of information about the innovation, including the important, desired, and key qualities found through the VED analysis. In order to guarantee that the inventor and the person conducting the patentability search are on the same page about the various features of the invention, it is helpful to share the calibration document with the client. This helps to better align the parties' efforts.

4. Reduce False Positives by Effectively Using Search Operators: When developing a search strategy, it is essential to effectively use truncation in keywords or synonyms. For the best outcomes, the team must apply various database truncations. For instance, "Car?" or "Cars" might come up in a patent database search for "Car?" "Card," a false positive search result, is another option. Therefore, making the best use of search operators is essential to reduce the amount of time wasted on false positives.

5. Select the Most Appropriate Classification: Select the CPC, US, IPC, etc. classifications that best describe your ideas in order to find patent documents that are most similar to them.

6. Execute a targeted keyword-based search to address issues with incorrect classification by national patent offices: National patent offices frequently classify patents incorrectly. As a result, important previous arts may go unnoticed during the patentability search process, which is a considerable obstacle. Running at least one search method without a categorization constraint is an easy fix for this issue. This keyword-only search technique can help you find relevant documents without missing them.

7. Recreate Search Strings Using Native Language Keywords: Prior art for an invention that is the subject of a patentability search may have been published in languages other than English. If you restrict the search to a single language, like English, you run the risk of missing significant prior art owing to a translation error. Therefore, search terms in a foreign language are advised by experts. Many premium databases allow you to perform search strings across many languages.

8. Conduct Research Using Native Language Experts: As was already indicated, the pertinent prior art occasionally appears in publications that are written in one or more foreign languages. Experts in the native language can assist with the search in such cases. Further enhancing the quality of results is the use of native databases, which greatly reduces the possibility of missing pertinent earlier arts. Additionally, if money is not a constraint, native language specialists can review search results in the native tongue to obviate any potential for misunderstanding.

9. Never disregard broader classifications: It is frequently noted that patents contain broader classifications than narrow ones. Therefore, a search that focuses on specific classes may miss results that are pertinent. Patentability search experts always advise running at least one search technique with larger classification limits to address this problem.

10. Take into Account Various Incarnations/Family Members: Patents may contain a variety of embodiments, thus it is important to take into account each embodiment and family member while analysing mapping findings.

11. Select an Appropriate Keyword: Proper search terms are essential for determining patentability. To select the best keywords for your innovation and enter them into your patent search engine, you can arrange brainstorming sessions. Start off with a broad perspective and gradually narrow down your search to include all possible keyword variations to make sure nothing is missed.

12. Use Citations of Prior Art of the Most Relevant Patents: Another strategy is to use the most pertinent patent to locate more patents that are comparable to it. There are many tools for patent searches that let you find both forward and backward citations. This procedure is strongly advised by patent specialists because these citations all relate to the same topic.

13. Expand the Search Scope to Dig Deeper: Performing the complete process in more jurisdictions can help to get results that are more precise and meaningful. To learn more, you can also examine a patent family.

Typical Procedure for Conducting a Patentability Search. Date Restrictions: The term novelty means that the invention must be completely original before submitting a patent application. Date constraints should not be added because they can restrict the scope of the patentability search.

2. Jurisdictional Restriction: Since the novelty and non-obviousness criteria are universal across the board, there shouldn't be any jurisdictional limitations when doing the search. In order to put things into perspective, any application or disclosure of an invention to the public qualifies as pertinent previous art.

3. Document Type Restriction: There should be no restrictions on the date or jurisdiction of any documents. Any reference or disclosure in a document constitutes previous art. It's noteworthy to note that even a casual mention, like one in a comic strip, can prevent an innovation from being patented.

4. Other factors, such as the volume of non-English and foreign language literature, and non-patent searches: Exploring non-English and non-foreign language literature is important when doing a patentability search. Similar to patent searches, non-patent searches are essential to make sure an invention is new.

Sagacious IP has been assisting clients in numerous industries verify the patentability of their discoveries for more than ten years. We work with Fortune 500 companies as well as small startups. Our knowledgeable team conducts a variety of patentability searches, from basic ones that have been practised for a while to sophisticated ones that make use of cutting-edge technology and are tailored to the most recent customer needs. While the latter deals with Quick (AI-based) and Hybrid searches, the former covers SV1 (Quick), SV2 (Adequate), SV3 (Comprehensive), SV4 (Comprehensive+), Knock-Out, etc. The team conducts a search in accordance with the client's requests.

In addition, a different kind of search is rapidly gaining appeal with customers, particularly legal firms. It contains a recommendation for an independent claim as well as a patentability opinion. This search is covered in more detail in the following section.

Search for Patentability with Opinion and Suggested Independent Claim

A patentability opinion sheet is created by patent analysts following a thorough analysis of the recognised references. They proposed a statement to identify components of an invention that are not original and inventive. Additionally, while some innovations may be entirely innovative, they could also include certain, non-unique traits. Decision-makers will find a patentability opinion useful in these situations. Additionally, a suggested independent claim aids decision-makers in enhancing the patent's reach and understanding the extent of claim limitations. As a result, this component of a patentability search report (which is detailed in more depth later) is useful for decision-makers to cut down on the time needed to design a successful patent drafting and prosecution plan.

Even though a thorough patentability search is usually advised before to submitting a patent application, it can be a costly and time-consuming process that not all inventors or patent applicants can afford. Additionally, inventors might simply have a general comprehension of the topic without conceptualization. In these circumstances, a brief search for patentability can be helpful to ascertain whether one can move forward with the idea. The benefits of such speedy searches for patentability are covered in our following section.

A Quick Patentability Search Has These Advantages

Innovators can familiarise themselves with the most recent research and knowledge in the field by conducting a simple search. Furthermore, patents and scientific literature contain information and technology that have not yet been commercialised. As a result, it clarifies pertinent previous art and aids in navigating the current state of the art in the innovation's field. It enables innovators and decision-makers to gain perspective and a working knowledge of the most recent developments in the relevant technological fields.

Before submitting an application for a patent, this knowledge might help creators or stakeholders improve their inventions. Additionally, it aids in creating a roadmap for their patent strategy and the elements they hope to cover in their patent applications. Using on-the-market AI solutions like LivePAT is one of the quickest ways to carry out the patentability search. In order to automatically navigate the large amount of information and produce patent-search tactics, AI systems rely on deep learning, neural networks, and natural-language processing. One can choose the amount of hits to be presented when employing AI tools. Additionally, these technologies may present promising earlier arts, which can give an inventor a fresh viewpoint.

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