This blog covers the importance of a Patentability Search—a critical first step before filing a patent. It helps inventors assess if their idea is new, non-obvious, and industrially applicable by identifying similar prior art.
A Patentability Search is an important process in patent filing, employed to determine whether an invention qualifies for patent protection—novelty, inventive step, and industrial applicability. It covers examining prior art to know similar inventions and establish the novelty of the idea. This blog outlines why a proper patentability search is so important, the tools involved, and how companies like Vakilsearch can assist innovators in preventing infringement, clarifying their claims, and making better patent applications.
What is a Patentability Search?
A patentability search, or novelty search for patents, is a thorough review of published patent literature and existing patents to ascertain if an invention qualifies for patent protection. The main aim is to evaluate the novelty and non-obviousness in patentability by establishing prior art—any publicly disclosed information that could impact the novelty of the invention. Performing patent search is an essential requirement of filing a patent application, as it allows inventors and companies to prevent expensive rejections by making sure their invention is novel before initiating the patent process.
Why is a Patentability Search Important?
It is important to conduct a patentability search prior to patent filing to ensure an invention complies with the legal requirements for protection. This will help to highlight the available patents and prior art, which will help mitigate rejected patent applications based on non-obviousness or lack of novelty. There are five reasons why patentability search is important:
- Checks for novelty and non-obviousness: The search reveals prior art inventions (existing inventions) to see if your concept is really new and not merely a slight modification of existing technology
- Prevents patent infringement: By detecting overlapping patents, it minimizes the chances of infringing on another’s intellectual property, saving time, money, and legal headaches
- Forms a stronger patent strategy: Search results direct how to write your patent application, assisting in defining the correct claim scope and pointing out means of distinguishing from earlier art
- Reveals market opportunities: Knowing the current patent landscape exposes areas of innovation gaps and opportunities where your invention can establish a competitive advantage
- Saves time and expensive mistakes: If an idea is not patent-worthy, a search saves you from going down the wrong path early on—saving application fees and resources for good ideas.
Moreover, a good patent search ensures that inventors do not infringe on patents, thereby avoiding expensive legal battles. By evaluating the gain from patentability analysis, companies can save considerable time, effort, and money by pursuing only genuinely patentable inventions. For example, companies that overlook this may spend heavily on R&D and filing expenses, only to be rejected or litigated subsequently. Keeping cost-saving in patent filing in mind, a patentability search is a mandatory step in the innovation process.
Key Steps in Conducting a Patentability Search
A patentability search adopts a methodical process to establish if an invention is new and not obvious prior to seeking a patent. The following are the key steps to perform an effective search:
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Step 1: Define the Invention Clearly
Start by summarising the technical aspects, functionality, and objective of the invention. A clear definition of the invention assists in recognising pertinent prior art and leads to a precise search.
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Step 2: Identify Relevant Keywords and Technical Terms
Extract relevant terms for the invention, such as synonyms, technical jargon used in the industry, and alternative spellings. Using Boolean operators (e.g., AND, OR, NOT) and patent classification codes (CPC/IPC) to narrow search accuracy.
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Step 3: Search Prior Art in Patent Databases
Employ patent finders, databases such as Google Patents, USPTO, WIPO, and EPO to carry out a prior art examination. Extend the search to encompass scientific papers and product descriptions as well.
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Step 4: Evaluate Results for Novelty and Non-Obviousness
Check the results retrieved to see if there are similar inventions. Compare characteristics and determine if the invention is a notable technical advancement compared to earlier art.
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Step 5: Document Findings and Refine Search Terms
Note the important references, patent numbers, and results in an organised manner. If necessary, narrow search queries and repeat the process to complete patent search documentation.
Tools and Databases for Patentability Search
Doing an efficient patentability search takes one to rely on credible Patentability finder, tools and databases. The tools enable them to pinpoint prior art as well as test an invention for novelty in patents within worldwide records as well as literature. Here follows a series of tools:
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InPASS (Indian Patent Advanced Search System)
InPASS is a special Indian patent search tool. It provides full-text search, tracking of legal status, as well as filtering on a classification basis, which makes it suitable for finding patents particularly in India. Inventors and companies aiming to serve the Indian market will find this database useful.
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WIPO PATENTSCOPE
Operated by the World Intellectual Property Organisation (WIPO), PATENTSCOPE is an international patent database giving access to Patent Cooperation Treaty (PCT) applications. Multilingual search, full-text retrieval, and complex filtering facilities make it worthwhile for global patent searches and global protection strategies.
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USPTO (United States Patent and Trademark Office)
USPTO is the U.S. official patent database, providing detailed records of patent grants, published applications, and legal status tracking. It is important to U.S.-based inventors and U.S. companies filing in the U.S., providing access to extensive information regarding existing and pending patents.
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Espacenet (European Patent Office)
Espacenet, which is hosted by the European Patent Office (EPO), offers global patent search functionality with powerful filters and machine translation capabilities. It is best suited for European and global technology-oriented patent searches, providing extensive information on patent trends and prior art.
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Vakilsearch Patent Search
Vakilsearch patent finder is for startups and solo inventors provides accurate results , legal aid and on time filing services, making it a great option for those requiring professional guidance in Indian patenting.
Tips for Choosing the Ideal Patent Database
Here are a few tips to use these top databases to ensure thorough prior art analysis and stronger patent protection.
- Use InPASS for conducting patent searches in India
- Use the USPTO database for American-specific inventions
- Use Espacenet for international patent analysis
- Use WIPO PATENTSCOPE for accessing global PCT applications
- Use Vakilsearch if you need legal advice along with patent search services.
Factors to Consider During a Patentability Search
When performing a patentability search, it’s important to assess a number of factors in view to decide if an invention is really novel and non-obvious. This helps to ensure the innovation has a good possibility of being issued a patent. Below is an in-depth list of the same:
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Novelty
The most basic patentability requirement is novelty, which means that the invention should be completely new and not disclosed in any form of prior art. Patent regulations in jurisdictions, like the USPTO (United States), EPO (Europe), and IPO (India), demand that there is no similar invention in already published patents, research articles, or public documents.
For example, if an inventor applies for a patent on a water bottle that self-cleans, but such an idea has previously been published in a research magazine, the application will be rejected on grounds of not meeting the novelty criteria.
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Non-Obviousness
Aside from novelty, an invention has to also establish non-obviousness, such that it ought to encompass an inventive step not easily reached by one of ordinary skill in the field. Although an invention might be novel, it may nevertheless be rejected on grounds of obviousness as an obvious development on existing technology. Patent offices check if the subject innovation brings considerable advancement compared to the earlier work.
For instance, if a patent applicant applies for a patent on a smartphone case that has a built-in kickstand, yet other similar designs exist and the addition is not regarded as a substantial change, it can be rejected under non-obviousness test.
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Utility (Industrial Applicability)
For a patent to be granted, the invention has to be useful and of industrial applicability. This implies that it must have a practical purpose and be able to be manufactured or used in an industry. Jurisdictions such as India, the U.S., and the E.U. mandate that the invention addresses a real-world issue. If an inventor suggests a perpetual motion machine, which violates the laws of physics, the patent office can deny it because patents lack industrial applicability.
Challenges in Conducting a Patentability Search
Making a patentability search is also subject to certain pitfalls, ranging from dealing with tricky databases to determining prior art effectively. Such problems can affect the completeness and distinctness of results. Here’s a comprehensive table of the same:
Difficulty in Identifying Prior Art Across Global Databases
One of the greatest issues in patentability search is finding pertinent prior art across various international patent databases. Because patents are filed across languages and jurisdictions, differences in terminology and classification schemes can render it hard to identify all pertinent references. To mitigate this, inventors ought to employ a number of databases, including WIPO PATENTSCOPE, USPTO, Espacenet, and InPASS, and employ sophisticated search methods like Boolean operators and classification searches.
Insufficiency of Technical Skills in Evaluating Results
Even when prior art is located, novelty and non-obviousness interpretation is a specialized patent search skill. Technical terminology, legal terminology, and intricate claim structures may render it difficult for inventors to determine if their invention qualifies under patentability standards. Engaging the services of patent professionals, attorneys, or patent search companies can facilitate effective evaluation of search results and increase the likelihood of a successful patent application.
Limited Access to Specific Databases or Tools
Certain premium patent search tools and databases involve paid subscriptions, limiting access to essential prior art. This restrictiveness can result in an incomplete patentability evaluation, raising the possibility of overlooking relevant references. To avoid this, inventors can use a mix of free and paid databases, browse national patent offices’ online tools, or collaborate with patent search professionals who have access to high-end databases.
Professional Assistance for Patentability Search
Professional help for a patentability search can significantly improve the quality and efficiency of the search process. Experts offer detailed expertise and access to specialized equipment that enable the discovery of applicable prior art in a better manner. Following is how professional help can assist:
Role of Patent Professionals
Patent agents and patent attorneys perform a vital role in performing a proper patentability search using their skills in identification of prior art, legal interpretation, and classification systems of patents. They assist in ensuring an invention satisfies patentability requirements with a lower likelihood of application rejection. In India, registered patent agents are eligible to offer professional patent search services, thus simplifying the process.
Expertise in Prior Art Identification and Patentability Analysis
Patentability analysis experts use sophisticated patent databases, Boolean search methods, and classification codes to identify prior art that may not be readily available from free searches. They also assess the novelty and non-obviousness of an invention by comparing it with already issued patents to ensure a solidly grounded patent application.
Cost and Benefits of Engaging Professionals
Although employing patent lawyers or search professionals entails expenses, it offers several benefits like accurate search results, time savings, and minimised legal risks. Professional search can avert expensive rejections and lawsuits. The price depends on the invention’s complexity and jurisdiction but the long-term gains usually justify the initial expenditure.
When Professional Help is Necessary
Professional searching is most useful in companies with very technologically or competition-intensive industries like pharmaceuticals, AI, and engineering. As an illustration, a new venture creating a novel AI-based diagnostic device would benefit from professional search to ensure no existing patents it might be stepping on and advance its patent planning prior to patent filing.
Cost of Conducting a Patentability Search
Knowledge of patent search expense is vital for inventors and companies who wish to acquire intellectual property rights cost-effectively. The expense of a patentability search is either low or high, depending on whether you are doing it yourself using free patent search resources or you engage experts who use paid patent databases.
DIY Patent Search: Low-Cost Option with Limitations
For individuals who want to save costs, doing a patent search on their own is possible. Google Patents, USPTO, and Espacenet are examples of free patent search resources where users can search current patents. DIY searches, however, need a thorough grasp of patent classification systems and search methods, making it more likely for one to miss prior art.
Professional Patent Search: Increased Cost, High Accuracy
Employing a professional or accessing a paid patent database is a more comprehensive and accurate method. Paid databases like Derwent Innovation and PatBase give access to international patent documents and sophisticated analytics, raising the likelihood of finding relevant prior art.
Long-Term Savings: Eliminating Expensive Patent Rejections
Although searcher searches are upfront, they result in patent filing cost savings due to the prevention of unnecessary fees for application filings, attorney bills, and time waste. With a successful search, inventors can hone in on their claims, enhancing their chances of a successful patent issuance and avoiding the financial burden of expensive rejections.
FAQs About Patentability Search
What is the purpose of a patentability search?
A patentability search helps determine whether an invention meets the key criteria for patent protection—novelty, non-obviousness, and industrial applicability. By identifying existing patents and prior art, this search allows inventors to assess the uniqueness of their idea before proceeding with the patent application process.
Can I conduct a patentability search myself?
Yes, individuals can perform a patent search using free patent search tools like InPASS, WIPO PATENTSCOPE, USPTO, and Espacenet. However, without experience in navigating patent databases, classification codes, and prior art interpretation, there is a risk of missing critical information. Hiring a professional ensures greater accuracy and comprehensive analysis.
How long does a patentability search take?
The duration of a patentability search can range from a few days to several weeks, depending on the complexity of the invention and the depth of the search required. Simple inventions may take less time, whereas searches covering multiple jurisdictions or highly technical fields may require detailed examination and expert analysis.
What happens if my invention is not novel?
If a patent search reveals that your invention lacks novelty due to prior art, you may need to revise or refine your invention. This could involve modifying design elements, improving functionalities, or focusing on previously unclaimed aspects that distinguish it from existing patents.
What tools are best for a patentability search?
Some of the most widely used patent search tools include InPASS (for Indian patents), USPTO (United States Patent and Trademark Office), WIPO PATENTSCOPE (World Intellectual Property Organisation), Espacenet (European Patent Office), and Google Patents. These tools help in exploring global patent databases and prior art references.
How much does a professional patent search cost?
The cost of a professional patent search varies based on the complexity of the invention and the expertise required. Typically, professional searches range from ₹500 to ₹2,500, with more extensive searches (covering multiple jurisdictions or complex technologies) costing even more.
Is a patentability search mandatory for filing a patent?
A patentability search is not a legal requirement for filing a patent application, but it is highly recommended. Conducting a thorough search beforehand helps avoid potential rejection, reduces the risk of wasting time and money on an unpatentable invention, and improves the quality of the patent application.
