Why do we need an Expert for Patent Searching?
Patents are granted most effectively to those innovations which are new, useful, and non-obvious. It is the process of the patent office to examine every pending patent application in light of prior arts to see if the described invention is new and non-obvious.
The patent search allows one to understand the weak spot or depth of the existing invention with the aid of using the literature present in the same domain of invention.
Since the patent search will assist disclose comparable patented inventions (prior arts), the inventor can refine the discovery or create new thoughts to make it patentable by analyzing the previous art literature.
It helps to modify the patent concept and will increase the threat of having a patent for the invention. The patent search saves time and money for the inventor as he/she will get to know if the invention is novel or if it already exists in the public domain.
There are different types of patent searches e.g., patentability search, invalidity search or freedom-to-operate (FTO) search, etc. For more illustration, Let’s take an example of a patentability search.
A patentability search is done by an inventor before filing to find whether the invention is new and non-obvious. The idea of prior art consists of all public disclosures earlier than the submitting date of a patent application, consisting of US patents and applications, patents and applications from different countries, and created product, or formerly supplied services. To compare whether an invention is new and non-obvious.
We’ll discuss the following aspects in very detailed manner in this article:
- Fallibility of search performed by non-expert
- Benefits of search performed by an expert
- Case Study for Patentability/Novelty Searching
Fallibility of search performed by non-expert:
Many inventors have emerged as professional at doing their very own patent searching. Searching part can be done by using:
- US Patent Office website,
- Google Patents,
- FreePatentsOnline.com and a lot of other regional and free databases.
After searching, analysis of the prior arts found can be problematic as the inventor can think that the invention is unpatentable over prior arts and miss out on the crucial differentiating element of the invention.
Moreover, open platforms like google patent search are not advanced searching platforms and sometimes an inventor can miss out on important prior arts due to a lack of access to paid patent databases.
It can lead to a loss of money since patent application usually costs between $8,000 and $14,000. Finding out that an invention is not patentable beforehand can save a great deal of money.
A search performed by a non-expert can lack thoroughness which is required and quality which in turn leads to deceptive results. Inventors might start to feel that the invention is patentable and move ahead with the process of filing. Therefore, it is necessary to do an extensive search before filling in the patent office.
Benefits of search performed by an expert:
Thorough patent searches require following things to be covered:
- Understanding on inventions and its technical keywords along with synonyms of the same
- Keyword-based searches and their combinations
- Use of International patent classification (IPC), Cooperative patent classification (CPC), US classes, F-Terms, FI, Locarno classifications in search strings,
- Top Assignee based searches those are very active in that technical domain
- Author/Inventor based search those are having highest literature published in the domain and many other techniques.
These techniques require experience and a firm grip in the field of searching. Using the experience of an expert inventor can get a clear picture of where the invention stands.
A patent expert can help in framing the patent application in such a way that reduces the chance of its rejection. They can use their experience in differentiating the invention from the prior art and highlighting the novel elements of the invention. Saves a lot of time & money for the inventor.
Thus, it is better to appoint an expert for the patent search and help to draft the patent application.
Fig. 1 Steps for Patentability / Novelty Search
It is essential to discover similar prior arts earlier than going through with submitting the patent application to the patent office. Generally, expert patent searchers must get entry to advance paid databases.
This helps an intensive search, and it lessens the chance of lacking out on prior artwork that may be problematic for invention in later stages. This once more saves the inventor from filing an unpatentable application and saves time and money.
Case Study for Patentability/Novelty Searching
Fig. 2 XLSCOUT Dashboard
Lets take an example of Patentability search which can be done using XLSCOUT:
STEP 1) Insert invention in Novelty Checker and click on Next:
Fig. 3 XLSCOUT Novelty Checker Module
STEP 2) Click on Results:
Fig. 4 XLSCOUT Novelty Checker Module
STEP 3) Analyse the list of patents:
Fig. 5 XLSCOUT Novelty Checker Module
STEP 4) Prepare detailed Novelty/Patentability Search Report:
Fig. 6 Sample Patentability/Novelty search report View
Aman Bhardwaj & Harvinder Singh