A patentability search is conducted to identify prior-art results that might challenge the novelty of an invention. In general, most companies outsource patentability searches to law firms or patent service providers. On many occasions, these law firms further prefer to outsource such searches to the latter. Traditionally, patent service provider firms conduct patentability searches and share the outcome with decision-makers (law firms or companies) in the form of a search report. The decision-makers then spend considerable time in evaluating the shared prior-arts. To help the decision-makers understand the outcome of patentability search quickly and accurately, Sagacious IP has crafted a new patentability search approach and its report variant. Let’s learn about this new approach and search variant in this article.

The Need For A New Patentability Search Variant

Patentability searches conducted by subject matter experts are time-consuming as considerable time is spent in identifying relevant prior-art after screening hundreds of patents. Patent service providers generally conduct these searches through subject matter experts who understand technology but may not be well-versed with drawing patentability conclusions. They simply collate the information/findings and share that outcome with the decision-makers.

Once the findings of the patentability search are shared with the decision-makers, significant time is spent in drawing a conclusion, i.e., patentability of the respective invention. This is because the output of traditional reports is informative in nature and not suggestive. Decision-makers, such as patent attorneys undergo laborious exercise before they are able to generate an opinion and conclude patentability. For fast-paced inventions or at law firms managing a huge bulk of cases, this whole exercise consumes significant time and the chances of overall process inefficiencies are very high. That’s why it becomes difficult for law firms to offer competitive pricing to their end clients.

Sagacious IP’s new patentability search approach and the search variant addresses the above mentioned problem. It cuts short decision-makers’ time in drawing patentability conclusions and understanding the tentative coverage of the invention. Overall, this improved process efficiency enables decision-makers to offer the most competitive pricing to their end clients.

New Approach – An Amalgamation of Subject Matter Expert & Patent Draftsman Expertise

To carefully cover the search horizons and propose a reliable patentability opinion, the new approach incorporates a team of experts. It comprises one subject matter expert who performs searching in close coordination with the second expert – an experienced patent draftsman. The steps suggested in the figure below explain how the expertise of both professionals helps in overcoming the limitation of the traditional search variant.

Step 1: Understanding Claimed Novelty – Starting with the process, the duo first discusses and brainstorms each aspect of the invention to develop a clear and concise understanding, along with key features of the invention. After discussion, the subject matter expert prepares the understanding and the key features to carry out the search. This step ensures that the search is effectively executed from the beginning to eliminate any setbacks related to the search coverage. The key features help in defining the novel aspects of the invention around which the search is carried out.

Step 2: Search Execution – Thereafter, the subject matter expert carries out the searching and finalizes the promising results as per the mutually agreed search focus. Additionally, the expert revises the search strategy in case of new developments related to key aspects of the invention considering identified results.

Step 3: Generating Patentability Opinion – Once the results are finalized, the subject matter expert and patent drafting professional work together to identify which aspects of the invention are covered/not covered in the prior-art results. Because the duo works in close coordination throughout the process, there is a luxury to discuss even the ‘minute’ aspect in detail. As an outcome, the difference between the invention and the identified prior-art is fetched and patentable subject matter is agreed upon. Accordingly, a patentability opinion of the invention is created and added in the report.

Step 4: Drafting Broadest Independent Claim – Once the patentability opinion is prepared, the patent draftsman prepares a tentative broadest independent claim in light of identified prior arts. This tentative broadest independent claim is shared in the report to provide decision-makers an estimation of claim boundaries and novel aspects of the invention.

The new patentability search report, which includes both patentability opinion and the tentative independent claim, eliminates the limitation of a traditional patentability search report. This helps decision-makers to cut short the analysis time to conclude/validate the patentability of the invention effectively and efficiently. The inclusion of patentability opinion and tentative independent claim also brings great value in strategizing their internal efforts.

Conclusion

Institutions such as law firms that have high workload can benefit immensely from this patentability search variant. This process is specifically more productive when bulk searches belonging to the overlapping domain are ordered. The process reduces significant time in establishing the patentability of the invention. Also, the provision of broadest independent claim provides a good starting direction to proceed and prepare a patent draft, which in turn saves time.

Sagacious IP has started providing this new patentability service that includes patentability opinion and an independent claim. Our team of patent practitioners is focused on helping businesses and supporting them to achieve their goals. To know more about our services, click here. For tailor-made solutions for your project requirement, reach out to us.

• Rohit Kumar, Nitin Sharma (Engineering Searching) and the Editorial Team

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