Patentability Search

Prior art or Novelty searches

Prior art or novelty searches are also known as patentability searches. Patentability Search / Novelty Search are conducted to unearth the closest prior art, be it a patent publication or non-patent literature. In order to file a patent application for an invention, the first step is to conduct a patentability search. A patentability search determines how unique an invention is compared to existing inventions.

Patent protection is a lengthy and expensive process that involves drafting and filing a patent application, prosecution of the application at the patent office and maintenance of the patent. Though patentability search is not a mandatory process before filing a patent application, it could help an inventor avoid spending money and resources on patentable ideas that are not new.

By conducting a patentability search, an inventor can determine whether or not the technical features of the invention can be patented, as well as how the invention differs from the existing art. It will also help the inventor strategize drafting the claims in a more appropriate manner, i.e., neither too broad nor too narrow. Moreover, a patentability search will help an inventor understand the current state-of-the-art, and allow designing around existing prior art, if required.

When the inventor determines that an idea for an invention does not already exist in the art, is non-obvious to a person skilled in the art, and has industrial applicability, then a patent application may be filed.

Patentability search is the foremost step in protecting IP rights and is useful in answering questions such as the following:

We have an invention and would like to seek protection at the earliest. Can we get a patent? If so, what could be the scope of protection?

Any invention is patentable only if it is novel and non-obvious to a person skilled in the art. SciTech Patent Art has been conducting patentability searches for independent inventors, academic and research institutes, and large corporations for over a decade; and has built unique expertise in assessing the patentability of an invention. We look at both patent and other published literature before providing our assessment in a cost-effective and timely manner. Our assessment helps the inventor in deciding on the scope of the protection that could possibly be obtained.

Our Methodology for a Patentability Search:

A patentability search is conducted by understanding the three key concepts – novelty, non-obviousness, and industrial applicability. At SciTech Patent Art, our analysts have been conducting patentability searches for topics from different technical domains, for over two decades. Our analysts are highly qualified subject matter experts from various technology domains, and are very familiar with the different patenting systems worldwide. They have a systematic approach towards conducting patentability search and assessment that involves:

  • Understanding the query and identifying key elements from the invention disclosure
    • Identifying key elements of the invention requires deep understanding of the technology. Our analysts have the experience and knowledge to grasp the technicalities from the invention disclosure.
    • Defining searchable concepts based on the understanding of the invention
  • Laying out a detailed search methodology that involves:
    • Identifying keywords, synonyms, spelling variations, plurals, abbreviations, etc.
    • Selecting appropriate class codes
    • Defining search or proximity operators
    • Developing search strategies and search strings using combinations of searchable concepts
  • Selecting appropriate information sources and databases to conduct the search
  • Multiple search iterations performed on various sources and database for comprehensive coverage
  • Identifying non-patent information using SciTech Patent Art’s proprietary Deep Web Search tool to uncover more information than any traditional methods of searching
  • Provide a comprehensive report with assessment of patentability

Report format of a Patentability Search:

Our typical patentability assessment report is in an MS Word or MS Excel format that includes –

Detailed search strategies with keywords and class codes covered

A mapping of the key elements of the invention i.e., comparison of key elements of invention with prior art

Assessment of patentability – High / Medium / Low

Relevant excerpts highlighted from prior art

We also provide custom reports to our clients based on their specific requirements.
For example: A PowerPoint report with visual representation of the technical analysis.

Why SciTech Patent Art?

  • For over 20 years, our team of searchers have been conducting patentability searches for law firms, research / academic institutions, corporates and small / medium sized enterprises.
  • Our team of searchers are subject-matter experts across a wide range of disciplines in science and engineering.
  • Our searchers are well-versed with patent laws of different jurisdictions.
  • Our interactive and tailored work process ensures frequent interactions to ensure accurate understanding of the invention.
  • We work as per the needs of our client’s timeline, and offer pricing to fit their budget as well.
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Examples of Patentability Searches

example-report-of-patentability-search
example-report-of-patentability-search

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FAQ

1) What is patentability search?

A patentability search, also known as a novelty search, involves search of prior art such as patents and non-patent literature; with an objective to identify relevant art in order to assess the chances of obtaining patent protection.

2) When should one perform a patentability search?

A patentability search is the first step performed before seeking IP protection for an invention. The ideal time to conduct a patentability search is just before starting any research on an idea.

A patentability search could also be conducted just before initiating the process to file a patent.

3) What are the advantages of conducing a patentability search?

A few benefits of conducting patentability search are:

  • As the complete patenting process is long and incurs expenditure towards the statutory fees to be paid to the patent office, a prior art search will bring clarity with respect to the key criteria for patentability.
  • Claims define the boundary of an invention. Information from a patentability search will provide information that will help in clearly defining the scope of the invention and draft patent claims. Further, the information could be used to draft the patent specification by differentiating the invention from prior art, describing the advantages and applications of the invention.

4) What is the criteria for patentability?

“Patentability” refers to the substantive conditions that must be met by patent offices, for an invention to be patented. The invention must meet the following patentability requirements:

  1. The invention must be a patentable subject matter as defined by patent systems worldwide.
  2. The invention must be novel and different from prior art.
  3. The invention must not be obvious to the person skilled in the art, i.e. the invention must be different from what a person skilled in the art can do
  4. The invention must have some utility or industrial application.

5) How can you perform a patentability search?

The search for patentability is performed by trained patent professionals with scientific backgrounds, who can understand the technology. Patent professionals are adept at searching patent databases using keywords, classification codes and multiple search strategies.

6) How much time and cost is required to conduct a patentability search?

The time and cost required to conduct a patentability search depends on the scope of the request. On an average, it takes 1 to 2 weeks and costs in the range of $1,000 to $1,500. Please contact us to discuss your request and obtain a free estimate of cost.