Guidelines For An Effective Patentability Search Scope

September 22, 2022
- Intellectual Property (IP)
- Patentability Search

A patentability search is a crucial step when filing for a patent. It involves considerable investment and determines your chances of securing a patent for your invention. Needless to say, a patentability search is of immense significance to the inventor. Below we elaborate on the need for a patentability search and discuss ways that will ensure optimal scope when conducting it.

What is Patentability Search?

Also known as a novelty search, a patentability search aims at revealing any reference that is similar to the invention in question. It is directed at finding patents or non-patent literature that establish any public disclosure of the invention (known as prior art). Novel, and non-obvious are two criteria an invention must fulfil in order to secure a patent. In order to make sure that the invention accomplishes both, a patentability search is imperative. It is conducted before filing a patent application.

Strategy for Optimal Scope

Time is of great essence when applying for a patent and businesses, therefore, desire a short TAT when it comes to patentability search. This can only be achieved if one follows an effective strategy to optimise search and focus on quality rather than quantity. The inventions, domains etc., that will fall under the purview of the search are defined in the scope which helps in narrowing it down.

Three factors must be kept in mind to optimise the patentability search scope:

Examining the Competitor’s Prior-Arts

It is always advantageous to stay abreast of the competitor’s strategies. This is especially true when it comes to the field of Intellectual Property. The enriching data available in prior arts of the patent portfolio can offer significant information that can be useful in myriad ways:

It can help solve a problem that’s proving a hurdle to the invention.
Understanding the patenting strategy can offer immense guidance to the inventor.

Citation Searches

Citations are references that assess an invention’s patentability and define the legitimacy of the claims. They are carried out both in patent references and non-patent literature. They are an important source of prior-art references and discovering any overlapping technological domains. By acquiring a clear understanding of the multiple domains an invention can belong to, one can strategize to enhance the scope of search. Not only will this enlarge the scope to include relevant material, but also ensure coverage in related domains that may have been overlooked otherwise.

Citations are of two types:

Backward Citations: Refers to patents available before the publication of the patent application. These are useful in finding related patent literature.
Forward Citations: The publications that have emerged after filing the patent application are forward citations. Forward citation searches help you stay updated with the continual developments in technology.

Term Sets and Overlapping Domains

Term sets refer to the keywords or nomenclature used to describe the components of the invention. It is a significant tool for the patent analyst to navigate through the troves of prior arts available. Often, the possible synonyms related to the invention are selected and used per the technology domain. Both patent and non-patent literature is referred to when creating term sets. Like citations, it serves well to keep in mind the overlapping domains when curating the keywords.

Better Screening

AI-based tools help screening the best results in real-time which can be further filtered out by manual analysis to get the most relevant results out of them. Hence, this approach gives better screening of the prior arts than the conventional methods.

Patentability Search Report

The Patentability Search Report is a valuable document that gives you a deeper understanding of the invention and reveals if it meets the non-obvious and novel prerequisites of obtaining a patent. Since the document is of great significance, most businesses hire specialised firms to conduct a patentability search. A well-drafted novelty search report is clear, easy to comprehend, and thorough in its methodology.

A good search report must contain:

Background of the invention along with a synopsis of invention disclosure, and well-defined key features of the invention.
The methodology employed to conduct the search from the various options available.
The data sources referred to in the search.
A consolidation of the search strings with the references that were reviewed for each string.
A feature-wise comparison of the invention against those disclosed in the prior art. A detailed analysis of the similarities and differences to help the client understand it better.
A conclusion keeping in mind the prior-art that has been found, along with suggestions/guidelines by an expert.

Conclusion

The results of the patentability search govern the entire patent process. This makes it extremely important that the search is carried out meticulously and with precision. Missing out on details can prove disastrous in the end goal of obtaining a patent. Despite their role in patent filing the time frame for conducting a patentability search is very less. Businesses are in a hurry to file the patent and leverage the benefits that follow. Besides, waiting too long to patent your invention can make you lose the competitive edge.

Given the limited time frame available to conduct the patentability search, it is recommended to devise a search strategy that lays out the framework. Clarity of the search scope is a key and should be your central focus so that all resources can be pointed in the right direction. Once the groundwork for the search is laid, it becomes easy to overcome the roadblock of time constraints and conduct a fruitful search.

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