Patentability Search: 3 Factors to Ensure Optimal Scope

Patentability search is a time-intensive process that is characterized by high risk and accountability. This is because hundreds of patent and non-patent literature works are searched and analyzed over a period of time to determine the novelty of an invention. Since organizations invest a large amount of money in patentability search on an hourly basis, it becomes vital that quality search results are provided with a quick turnaround time.

With an effective patentability search scope, one can create and navigate a comprehensive search strategy to yield promising outcomes in a limited period of time. The scope of patentability search defines what kind of inventions/technical domains, etc. will get covered in the respective search. Therefore, it must remain dynamic throughout the search process. By properly evaluating the search scope, decision-makers can check the search quality as well as prepare an outline for a successful patentability strategy. This article mentions three factors, highlighted in the figure below, that ensure the optimal search scope and how it impacts decision-makers.

1. An Eye on Competitor’s Prior-Arts

A competitor who is working in the same technology domain might encounter a similar problem that is addressed by the innovator’s invention. Similarly, a competitor’s portfolio might have patent(s) that explicitly or partially disclose the solution to overcome the respective problem. Therefore, one must consider competitors as ‘think tanks’. Exploration of their patent portfolio can not only reveal the occurrence of any close prior-art, but also aid in understanding of patentability strategy adopted by them. Furthermore, promising results, if any, can act as reference for drafting the patent application in a timely manner.

2. Overlapping Technological Domains


Patents are cited by the inventors, patent office and third party to disclose the state of prior-art. It provides a quick snapshot to understand the technical information on the subject matter and its influence on the patentability of the invention. This can also reveal various overlapping technology domains in which the respective invention can fall. For example, a communication-enabled camera that monitors the sleep of an infant can also be used to monitor the surroundings of a vehicle.

Therefore, citation search can provide a clear overview of other technology domains in which the respective invention can fall. With such information, one can prepare an effective search scope to ensure optimum coverage of other search strings with respect to each important aspect of the invention. This will ensure search coverage not only in main technology domain but also in the overlapping ones.


Figure: Illustration of the tentative technology overlap in a given invention

3. Term Sets and Domain Classification

Before beginning with the patentability search, the searcher lists certain key terms. These are known as ‘term sets’, which are essentially keywords and their synonyms based on the given invention’s technical terminologies. Searchers often use patent as well as non-patent literature to identify these term sets. Thereafter, the relevant classification of the search domain is also identified.

Here, it is preferable to explore not only the technology domains that are directly relevant but also other overlapping domains for a wider search coverage. For example, CPC classification B60T is related to vehicle brakes while another classification F16D is also related to brakes. Therefore, for any invention pertaining to brakes, it is advisable to consider both classes while conducting the search. Notably, term sets and classifications can be dynamic and are often subject to change during the search process. Therefore, both the elements should be updated as per the new findings.

Conclusion

The decisions regarding the entire patent process are often dependent upon the outcome of the patentability searches. Therefore, it is vital to ensure that the search is carefully conducted by giving due attention to the search focus and respective technology domains. However, time constraint acts as a major roadblock in the process. This is because a quick turnaround time is necessary to have an upper edge in the market. Therefore, it is critical to coin an effective search strategy within the given time to create a win-win situation.

One way of preparing an effective search strategy and reducing the time required for analysis is to have a clear understanding of the search scope and alternative technology domains, respectively. This will not only save time invested in analysis but also give assurance with respect to occurrence/non-occurrence of any conflicting prior-art that can impact the future of the invention.

Sagacious IP’s patentability search services are designed keeping in mind these requirements. Our team of expert patent analysts offers pertinent prior-art cost-effectively and at the right time. Click here to know more about our services.

  • Mani Singhal, Rohit Kumar (Engineering) and the Editorial Team

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