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Patentability Search Reports: Key to Securing Patents

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In the world of innovation and intellectual property, patents play a crucial role in protecting inventions and encouraging technological advancements. Before filing a patent application, it is essential for inventors and businesses to determine whether their invention is novel and non-obvious. This is where a patent report or more commonly known- patentability search report comes into play. 

Introduction 

Novelty search, also referred to as a patentability search, aids in determining what patent or non-patent literature papers would be pertinent to that assessment and whether an invention can be patented. The search aims to find any public revelation of the creative notion occurring before the date of the invention under consideration, anywhere in the globe. 

Before submitting a patent application, it is helpful to do a patentability search, as it aids in developing a strategy. The closest prior art discovered in a novelty search can also point out any issues that might come up during patent prosecution, and help you build your invention’s claims without infringing on existing prior art. 

Table of Contents

Understanding Patentability 

Patentability refers to the criteria that an invention must meet in order to be granted a patent. Generally, for an invention to be patentable, it must be novel, involve an inventive step, and have industrial applicability.  

Novelty means that the invention must be new and not publicly disclosed prior to the filing of the patent application. The inventive step requirement implies that the invention must not be obvious to someone skilled in the relevant field. Finally, industrial applicability ensures that the invention can be produced or used in some form of industry. 

What is a Patentability Search Report? 

A patentability search report, also known as a patentability or novelty search report, is a comprehensive search conducted to determine the patentability of an invention. This search is typically performed by a patent professional, such as a patent attorney or patent agent, who has expertise in conducting thorough searches within patent and non-patent literature databases. 

The purpose of a patentability search report is to identify prior art references that may affect the patentability of the invention. Prior art refers to any publicly available information that is relevant to the invention, including patents, patent applications, scientific publications, technical articles, and other public disclosures.  

By examining prior art, a patentability search aims to assess the novelty and non-obviousness of the invention and provide an informed opinion on its patentability. 

Patentability Search Reports: Key to Securing Patents

Scope of the Patentability Search 

When conducting a search for patentability, a patent analyst concentrates on the two requirements for obtaining a patent: novelty and non-obviousness or inventive step. The searcher looks for information that would call into question whether the invention is new or novel, or whether it would have been obvious to people who were knowledgeable in the field of technology at the time of invention. 

The complete patent specifications as well as any technical and non-technical publications should be searched. In other words, any written documentation that comes before the filing date of the invention or the present, if not yet filed, covering the features of the invention under study.  

Must–Have Elements in a Patentability Search Report  

  1. Key features matrix of the invention:
    Without a few essential components, an invention may be impossible for a professional with average expertise in the same field to duplicate. Therefore, in order to be thorough, a good patentability search report needs to have clearly specified important features. 
    Typically, technical professionals analyze and dissect the invention into many sections, each of which stands for a particular feature. The next step is to compare and map each search result against the main features that have been developed to determine which results are most similar to the innovation.
    This helps to make sure there are no search gaps between the many concepts and how they are applied in the particular invention. It also clarifies which elements of the invention are and are not covered by the acknowledged prior arts. With this knowledge at hand, one can predict the claim boundaries and, in turn, the protection range of the relevant invention. 
  1. Organizing the reference documents into categories:
    The search report can include relevant references in a variety of ways. A common practice is to categorize papers like the worldwide search report according to their nature and degree of relevance to the invention in issue. 
    For instance, consider the “X” or “Y” category papers in reports on worldwide patent searches. The invention falls into the X category if a single reference fully discloses all of its novel aspects, directly influencing its novelty.
    The documents falling under the “Y” category reveal one or more aspects of the invention in question, and when combined with additional “Y” papers, they may demonstrate the existence or lack of inventive step. 
    Others simply divide the documents into the categories of most pertinent, related or similar, distantly related, and unrelated based on how well the invention’s original and innovative qualities map to the reference. 
    The document that has the most bearing on the criterion for novelty and obviousness. The report also includes a complete list of the documents’ bibliographic information. It is also possible to provide an annexure listing all the other pertinent documents that address the same topics as those listed in the report. 

List of Key features 

Reference Documents with category (Patents) 

Reference Documents with category (NPL) 

Key Feature 1 

WO2020016730 (X), WO 2013/091154 A1 (Y) 

Sridhara et al. (Y), 

Key Feature 2 

US 4956353 A (X) 

International Journal of Chemical Studies 2017; 5(6): 1512-1516 (Y) 

Key Feature 3 

US 2013/0253054 A1 (Y) 

Zhang et al. (X) 

  1. Patentability opinion or Conclusion
    The patent analyst then creates the patentability opinion, which is a declaration that the analyst makes to identify the components of an invention that are not original and non-obvious, after extensively evaluating the recognized references.
    Furthermore, an innovation may contain some components that are not entirely original while yet being novel overall. A patentability opinion can be incredibly useful for decision-makers in such a situation. 
    Furthermore, a preliminary independent claim aids decision-makers in clarifying the patent’s scope and understanding the limitations of claim limits. As a result, decision-makers can save time by using this component of a patentability search report to develop an efficient patent drafting and prosecution strategy. 

Step-by-step Guide to Creating a Patentability Search Report 

Step 1: Define the Scope of the Invention: 
Begin by clearly defining the technical scope of your invention. Identify the key concepts, components, and functionalities that make your invention unique. This step is important as it helps in constructing effective search queries and ensures a focused and targeted search. 

Step 2: Conduct a Preliminary Search: 
Start with a preliminary search using patent and non-patent databases to get an initial understanding of the existing prior art landscape. Use relevant keywords, synonyms, and variations to search for similar inventions. Review the search results to identify potentially relevant documents and further refine your search strategy. 

Step 3: Refine Search Queries: 
Based on the preliminary search results, refine your search queries to target specific aspects of your invention. Use advanced search techniques such as Boolean operators (AND, OR, NOT), proximity operators (NEAR, ADJACENT), and truncation symbols (*) to broaden or narrow your search. 

Step 4: Conduct a Comprehensive Search: 
Perform a comprehensive search using patent databases (such as the USPTO, EPO, and WIPO) and non-patent literature sources (such as scientific journals, conference papers, and technical articles). Utilize both keyword-based and classification-based searches to cover a wide range of relevant prior art. 

Step 5: Analyze and Evaluate Prior Art: 
Review the identified prior art documents in detail. Analyze the similarities and differences between your invention and the prior art references. Assess the novelty and non-obviousness of your invention by comparing its features with the elements disclosed in the prior art.  

Step 6: Compile the Patentability Search Report: 
Summarize the findings of your search in a clear and organized manner. Include a detailed list of the prior art references, along with their relevant details (e.g., patent numbers, publication dates, inventors).  

Provide an analysis of each reference, highlighting their relevance and potential impact on the patentability of your invention. Conclude the report by offering an informed opinion on the patentability of your invention based on the search results.  

Conclusion  

In the realm of patent law, a patentability search report serves as a valuable tool for inventors and businesses. By identifying prior art references and assessing the novelty and non-obviousness of an invention, this report enables informed decision-making regarding the pursuit of patent protection.  

Conducting a patentability search before filing a patent application can help save time, resources, and enhance the overall quality of the patent. Ultimately, it empowers inventors to navigate the complex patent landscape and secure intellectual property rights for their innovative creations. 

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