Patentability Search – Securing the Novelty of Innovation
Timely identification of pertinent prior arts can help R&D departments, businesses, individual inventors, etc., avoid hurdles in the innovation and patenting process. It works by helping patent applicants identify patent and non-patent literature that may affect an invention’s patentability. That is why more and more innovators are using patentability search services to file and obtain patents seamlessly. Failing to perform patentability search before filing a patent application can easily lead to unforeseen office actions and even result in rejection.
This article is a comprehensive discussion on patentability search, and covers how to perform it, standard practices, patentability search reports, etc. It also sheds light on Sagacious IP’s innovative approach to patentability search. But first, let us understand the meaning of this search.
Understanding Patentability Search
Sometimes referred to as a novelty search, a patentability search assists in identifying the closest prior art disclosed in the past. This helps gauge the chances or likelihood of an invention getting patented, especially on the criteria of patentability and non-obviousness. It covers patent as well as non-patent literature to identify relevant references that may be prior art. In case a similar or identical invention is identified through a patentability search, the innovator can decide whether to go for an application filing or not. Also, it provides an opportunity to modify the scope of the invention in light of the identified prior art. Thus, a carefully performed patentability search strengthens the quality of the patent draft and helps the innovators get the best patent protection for their inventions.
Before filing a patent application, an innovator may ponder the need for patentability search and the advantages it can offer. The following section elaborates on the same.
Need for Patentability Search
An important question that pops up in everyone’s mind while talking about patentability search is why it is required. There are five main reasons for conducting the search, as shown in Figure 1 below:
1. Check if an Invention is Patentable: Before filing a patent, it is imperative to find out prior arts related to the invention and decide if the subject matter is patentable to avoid unnecessary expenses on patent drafting and prosecution.
2. Determine the Most Optimal Patent Claims: Patentability search results offer crucial information for filing the most optimal claims. It should neither be too broad to eliminate unnecessary expenses, nor too narrow so that it is not enforceable.
3. Speed up Prosecution: It assists in expediting the prosecution process by minimizing the chances of office actions. The search is a proactive measure that helps eliminate duplicate or derived inventions before filing for a patent grant. Only the innovations that pass the scrutiny of the search are moved forward, thereby reducing the chances of any opposition and speeding up the entire process.
4. Enhance Inventions/Design-Around: Patentability searches allow R&D teams to find potential improvements in the invention and create new designs around the existing prior art.
5. Reduce Overall Cost and Time: The search helps businesses divert resources, such as time and money, from inventions that are not patentable towards patentable ones.
The patentability search also acts as a filter for selecting only the best inventions. The benefits are especially crucial for IP-centric organizations with a strong R&D team. Companies generally work on more than one invention at any point in time and file multiple patents simultaneously. However, the patent offices, such as the United States Patent and Trademark Office (USPTO), also reject several patent applications. For instance, in 2019 alone, the USPTO rejected 422,616 of 895,388 total applications processed during the year. Such rejections can lead to severe financial losses in the form of squandered investments. Therefore, it is vital to execute a patentability search to detect which inventions are the most non-obvious and novel.
The next section shares insights on performing a patentability search to help you achieve the best results from the activity.
Ways to Perform Patentability Search on Existing Patent Database
The below-listed points help obtain the best results while performing patentability searches on various patent databases:
1. Utilize Invention Disclosure Form: Almost all organizations around the world utilize this method for capturing innovation from their R&D teams. Also known as IDF, this form answers several critical questions, such as the difference between invention and prior art documents, how an invention is novel, how it is better than prior art, etc. Such answers can be immensely critical before performing a patentability search, as they help develop a comprehensive understanding of the invention.
2. Prioritize Key Features to Focus Efforts on Critical Aspects: Most inventions have one or more features that make them stand out from other products in the market. The team or individual performing a patentability search must identify such features using VED segregation, which classifies items into Vital, Essential, and Desirable categories, and focus their efforts on the same. Thereafter, the team can shift the attention to the essential and desirable parts of the invention.
3. Prepare and Share Calibration Document: This document contains myriad aspects of the invention, such as the key, essential and desirable features identified through VED analysis. Sharing the calibration document with the client helps ensure that both parties (inventor and the patentability search performer) are on the same page regarding the various aspects of the invention and the efforts are better aligned.
4. Minimize False Positives through Effective Usage of Search Operators: Effectively using truncation in keywords or synonyms is critical during search strategy formulation. The team must use different truncations in databases to get the best results. For instance, when you search for “Car?” on a patent database, the results could be “Car” or “Cars.” Another possible search outcome is “Card” – a false positive. Thus, optimal use of search operators is critical to save time spent on false positives during the search.
5. Find the Most Suitable Classification: Find the most appropriate CPC, US, IPC, etc. classifications for your inventions to search for patent documents that are most identical to your invention.
6. Run Targeted Keyword-Based Query to Address Issues of Incorrect Classification by Patent Offices: Patents are often wrongly categorized by national patent offices. This is a major hindrance in the patentability search process as significant prior arts may be missed. A convenient solution to this problem is running at least one search strategy without classification restriction. This purely keyword-based search strategy can help avoid missing a relevant document.
7. Replicate Search Strings using Native Language Keywords: The invention behind a patentability search can have prior art published in foreign languages. Limit the search to a single language, such as English, and you can easily miss important prior art due to an error in translation. Thus, experts recommend using foreign language keywords in searches. There are numerous paid databases that support running search strings in multiple languages.
8. Run Searches through Native Language Experts: As mentioned above, at times, the relevant prior art may be published in one or more foreign languages. In such scenarios, native language experts can help run the search. Moreover, performing these searches on native databases can further improve the quality of results by minimizing the risk of missing relevant prior arts to a great extent. Furthermore, if budget is not a restraint, then native language experts can analyze search results in the native language to eliminate any chances of misinterpretation.
9. Never Ignore Broader Classifications: It is often observed that patents have broader, instead of narrow classifications. Therefore, a search focusing on narrow classifications can miss relevant results. To tackle this issue, patentability search experts always recommend running at least one search strategy with broader classification restrictions.
10. Consider Different Embodiments/Family Members: Patents can have multiple embodiments, and one should look at all embodiments and family members while mapping results.
11. Choose a Suitable Keyword: Suitable search keywords are critical for patentability search. You can organize brainstorming sessions to find the most suitable keywords for your invention and place them into your patent search tool. Initially, focus on a broader perspective and gradually narrow down your search to cover the variations of every possible keyword to ensure nothing is left out.
12. Use Citations of Prior Art of the Most Relevant Patents: One should also attempt to utilize the most relevant patent to find more similar patents. There are numerous patent search tools available that allow you to find both forward as well as backward citations. Since these citations pertain to the same subject matter, this step is highly recommended by patent experts.
13. Widen the Search Scope to Dig Deeper: Expanding the search scope by repeating the entire process for other jurisdictions can help obtain more accurate and significant results. You can also analyze a patent family to gain more insights.
Standard Practice for Performing Patentability Search
The following four standard practices help ensure the accuracy of patentability search results:
1. Date Restriction: The term novelty indicates that the invention should be utterly new before applying for a patent. Adding date restrictions can limit the scope of the patentability search; hence must be avoided.
2. Jurisdiction Restriction: As the non-obviousness and novelty parameters are absolute across the globe, there should be no jurisdictional restrictions while performing the search. To put things in perspective, any public disclosure or use of an invention amounts to relevant prior art.
3. Document Type Restriction: Apart from no date and jurisdiction restriction, there should not be any document type restrictions. Any disclosure in a document or any reference is prior art. It is interesting to observe that even a non-formal mention, such as a comic strip, can create an obstacle in the patentability of an invention.
4. Other Factors such as Volume of Foreign Language Literature, Non-patent Search: The exploration of foreign language/non-English literature is significant while carrying out a patentability search. Similarly, non-patent searches are also crucial to ensure the novelty of an invention.
For more than a decade, Sagacious IP has been helping clients in diverse domains verify the patentability of their innovations. We serve right from individual innovators to Fortune 500s. Our expert team performs a wide range of patentability searches, including general searches that have been around for a long time, as well as advanced ones that leverage new-age tools and are optimized for the latest clients’ requirements. While the former includes SV1 (Quick), SV2 (Adequate), SV3 (Comprehensive), SV4 (Comprehensive+), Knock-Out, etc., the latter deals with Quick (AI-based), and Hybrid searches. The team performs a search as per the client’s requirements.
Additionally, there is another search type that has been gaining immense popularity among clients, especially law firms. It includes a patentability opinion and ‘recommended independent claim’. The next section delves into this search.
Patentability Search with Opinion & Recommended Independent Claim
Patent analysts prepare a patentability opinion sheet after thoroughly analyzing the identified references. They put forward a statement to recognize parts of an invention that are not unique and non-obvious. Moreover, some inventions may be holistically novel but may contain specific features that are not unique. In such instances, patentability opinion will prove effective for decision-makers. Moreover, a recommended independent claim assists decision-makers in further improving the scope of the patent and grasping the extent of claim boundaries. Hence, this section of a patentability search report (explained later in detail) is valuable for decision-makers to minimize the time required for developing an effective patent drafting and prosecution strategy.
Although a comprehensive patentability search is always recommended before patent application filing, it can be an extensive, time-consuming activity, and not all innovators or patent applicants can afford it. Moreover, at times, innovators only have a broad understanding of the idea without conceptualization. In such cases, a quick patentability search can come in handy to determine whether one can proceed with the idea. Our next section discusses the advantages of such quick patentability searches.
Benefits of a Quick Patentability Search
A quick search assists innovators in getting familiar with the current literature and knowledge in the domain. Moreover, patents and scientific literature include knowledge and technologies still not available in the market. Accordingly, it sheds light on relevant prior art and assists in navigating the existing state-of-the-art in the innovation’s domain. It enables innovators and decision-makers to develop perspective and familiarity with the current innovations in the concerned technology areas.
This knowledge might assist innovators or stakeholders improving upon their inventions before filing a patent. It also helps prepare a roadmap of patent strategy and what they aim to include in their patent applications. One of the fastest techniques to conduct the patentability search is to utilize AI tools, such as LivePAT, available in the market. AI tools depend on deep learning, neural network, and natural-language processing to generate patent-search strategies and automatically navigate the vast volume of information. While using AI tools, one can select the number of hits to be displayed. In addition, these tools might deliver promising prior arts, which can help an inventor gain a new perspective.
The next section highlights Sagacious IP’s internally developed hybrid patentability searches.
Sagacious IP’s Hybrid Patentability Search & its Benefits
The hybrid patentability search developed by Sagacious IP ensures high-quality results with substantially lower turnaround time and costs. This approach entails a combination of manual and AI-based searches. The important benefits of hybrid patentability search are shown in the figure below:
1. Overall Cost Savings: Compared to a conventional search, a hybrid patentability search is a two-stage screening process, which includes knock-out novelty searches and manual pre-filing searches. This two-step approach costs only one-third in comparison to traditional searches. In addition, the ideas filtered using a hybrid system generate a high return on investment (ROI) as the companies are more confident of their patent worthiness.
2. Less IP Protection Costs: If a company possesses a reasonably well-set-up idea screening process, it can minimize costs associated with office actions (OAs) and responses that patent attorneys subsequently file. The hybrid approach that involves AI-based and manual search assists companies in removing low-value ideas in the initial stages and avoiding costs associated with office actions. Moreover, it can help them avoid costs related to patents that may lapse or get revoked in the future.
3. Investing in Contemporary Search: Besides knocking out non-patentable ideas, the hybrid approach aids companies in targeting high-value inventions. For example, suppose a company recognizes high business value concepts in the first-level (AI-based) screening, IP experts can conduct more searches on those ideas including the correct scope and aspects of the invention. When it comes to costs, the hybrid approach is comparatively less expensive than traditional searches for high-value innovations and helps save around one-third of the final search costs.
4. Reduced Turnaround Time: An inventor’s time and ideas are incredibly precious. So even a slight delay in patentability searches can drastically impact the probability of patent filing. For example, a patent search process that covers multiple layers of engagement does not affect just an inventor’s chain of thoughts but also breaks the next steps in the patent filing process. With a hybrid patentability search process, involving a two-stage screening, ideas can be precisely assessed for patentability, therefore reducing the final turnaround time.
5. Value from Ideas: If a company boasts a remarkable idea screening process, its in-house IP team can promptly determine whether an idea under question is patent-worthy. The hybrid patentability search via its AI tool allows its users to quickly and efficiently search all publicly available prior arts in real-time. The screened ideas are further refined since they have been mapped against prior arts to knock out insignificant ones.
Detailed searches often end with the preparation of patentability search reports that aid decision-making – whether to proceed to patent application filing or not. The below section explains patentability search report and its significant elements in detail.
Patentability Search Report and Its Key Elements
Patentability search reports inform decision-makers about prior art to assess the correct way to acquire patent protection for a specific technology. The content of these reports, i.e., the prior-art references shared, also reduces decision-makers’ observation, analysis, and brainstorming time.
Moreover, with the increasing speed of patent filings, it is more daunting to establish the novelty of innovation. Therefore, these reports must be precise and concise to assist decision-makers in developing a clear strategy for invention patentability before securing protection. The report results should be detailed and available in a readable and easily understandable manner to aid informed decision-making. There are several key things that an exhaustive patentability search report must include to help decision-makers. These are explained in detail below:
1. Key Features: An invention can contain several essential features without which a moderately skilled professional within a similar field cannot replicate the innovation. Hence, a good patentability search report should have vital elements well-defined. Usually, technical experts study, analyze, and divide the invention into several parts, where every component highlights a feature of the invention. Afterward, all search results are compared and mapped corresponding to the prepared vital elements to analyze the closest results to the invention. It ensures that no search gaps exist in the various concepts and their application of the given invention. This also emphasizes parts of the invention covered by the identified prior arts and the ones that are not. With such information, one can quickly predict the claim boundaries and the respective invention’s protection scope.
2. Searcher’s Comment: Typically, IP experts with appropriate experience in the technical domain perform exhaustive patentability searches to ensure novelty. Their comments are insightful in determining the patentability of the given invention. Hence, a good patentability search report should include the searcher’s comments on all relevant search outcomes regardless of their type, i.e., patent and non-patent. These comments offer decision-makers a precise overview of the results, helping them save time. Moreover, it reduces communication gaps between the patent searcher and decision-makers by offering a direct view into the insights while performing the search.
3. Summary and Explanation of Results: Ideally, each patentability search report must include an overall summary of the search. A traditional approach, such as tic-tac-toe mapping, is best suited for this requirement. This helps decision-makers at higher levels identify the key features of the invention that have no prior art and are novel in nature. Further, excerpts from every prior art should be mapped against the key features of the invention to complement the search.
Although individuals and in-house counsels can perform different types of patentability searches, it makes sense to engage with a search partner. In the next section, we will discuss the same.
Four Reasons to Engage with Search Partners
Working with a patentability search partner is beneficial for small as well as large businesses. Here are the main reasons why:
1. Advanced Technical Competency: External patentability search partners have a specialized team of experts with deep knowledge in various technical domains. These professionals generally have years of relevant experience in performing patentability searches. As these dedicated teams operate in specific domains on a consistent basis, it allows them to understand the technical field quite well. The team members also utilize internal processes and tools, such as keyword repositories, to produce an effective search strategy quickly. Moreover, these teams collaborate on technologies that need multi-disciplinary skills and make the most of their experience.
2. Third-Party Confirmation: Ideally, when innovators perform the search on their own, they focus on recognizing prior arts that are either concerned with the same technology domain or resolve the same problems addressed by the invention. They ensure that no prior art is missed while restricting the search to a particular technology domain. On the other hand, third-party experts aim their search strategy to navigate multiple technology domains. They identify how the cross-domain patents may act as prior art in combination with other similar identified patents. As a result, they ensure that no significant patent is missed from the patent law perspective.
3. Well-Defined Processes and Tools: Expert patentability search partners realize the importance of first-mover advantage when it comes to filing patents. They have rigid standard operating procedures (SOPs) that direct their search strategies and propel quality work. As searching for relevant prior arts is often time-consuming, depending on in-house teams to perform these non-core tasks can demand a lot of resources.
4. Tailored Services as per Client’s Needs: Most patentability search service providers offer customized solutions to match a client’s requirements. This ability to deliver as per the organization’s needs (quick searches, hybrid searches, searches with an independent claim, etc.) makes them a great option. Building an internal team of experts that can perform all these searches tends to be a cost-intensive task.
With well-laid SOPs, external patent search partners know the time to spend on different aspects of a patentability search. Using their time management skills that form a part of their experiential competency, these analysts can come up with comprehensive patentability search reports in a stipulated turnaround time. It means that you will be able to allocate more time and resources to your core competencies, such as meeting strategic objectives and planning business expansion.
Similarly, search partners also allocate highly efficient tools to optimize searches. They use artificial intelligence-based tools to get high-quality results during preliminary searches. Thereafter, these partners further improve search results manually, using their proven expertise.
Why Choose Sagacious IP for Patentability Search
1. Customized process for bulk contracts for large corporations as well as small requirements by individual inventors, IP law firms, and SMEs.
2. A robust process to reduce the involvement of patent counsels/inventors while ensuring appropriate understanding and execution.
3. Unique and easy-to-understand report with the following features:
- Tic-Tac-Toe Mapping: A fast snapshot of the identified prior art references against the critical features of the invention.
- Detailed Mapping: Important texts from prior art, in combination with the expert’s comments, are mapped against every invention feature.
- Highlighted PDFs: Full-text PDF is generated for each recognized reference with highlighted relevant text within.
4. A vast experience in performing thousands of patentability searches every year for customers of different capacities and various technology areas from 65+ countries.
5. Ability to handle search, invention disclosures, and analysis in 16+ languages.
6. A large multi-disciplinary team with 350+ in-house experts across Engineering; Information, Communication and Technology (ICT); and Life Science disciplines.
7. Search coverage includes patent and non-patent literature from more than 100 countries in multiple technology areas covered through more than 10 specialized databases.
8. Highly competitive pricing suitable for every budget and requirement.
Patentability searches are extremely important to eliminate the possibility of future office actions and save valuable time and resources. Organizations should have a clearly defined process for performing a patentability search. A faulty execution because of an incoherent process can produce an undesirable outcome. That is why it is crucial to avail the services of a reliable third party with deep expertise in conducting patentability searches.
Sagacious IP leverages the power of technology to deliver unmatched intellectual property solutions. We have delivered more than 25,000 projects globally in more than 60 countries. Through our patentability/novelty search service, we help verify the novelty of inventions and fetch optimal patentable subject matter. Patentability searches are a crucial step that helps our clients decide whether to invest in a new patent application. You can read more about our expertise on the service page.
– Nitin Sharma (Engineering Searching) and the Editorial Team