Author: Sannidhi Chakrala,
Chanakya National Law University
Patent, in the context of Intellectual property law, is the exclusive or the sole right of an individual (inventor/patentee) to exclude others from manufacturing, using, selling or importing his/her invention without his/her permission. Once the said invention has been granted a patent, it imposes a legal duty upon others to refrain from engaging in the manufacture/sale/use of the invention in the absence of the permission of the patentee who. becomes the rightful owner of the patent after its grant, albeit probably for a limited period of time.
The invention could mean any product or process which is novel, non-obvious and possesses utility. These are the sine qua non for any invention that seeks to be protected by a patent. It is the responsibility of the patentee to ensure that his/her proposal (invention) meets the required standards for the patent to be granted. However, this is not a plain sailing task as it involves fastidious research on behalf of the patentee for ensuring the patentability of the invention and avoiding any potential patent-infringement issues or legal hassles in the future.
For this very purpose, it is highly advisable for the patentee to hire the services of a patent attorney who will see to it that the process of patent application is as expeditious and smooth-sailing as possible. There are certain fundamental steps that are required to be carried out by the patentee before embarking on the application process. First and foremost, the patentee, if he/she so decides to consult an attorney, must disclose the invention to the attorney. This is called as “Invention disclosure” and it is done by signing a non-disclosure agreement. An Invention Disclosure Form is basically for the documentation of the invention. This is a means to document particulars of the invention and submitting it to the patent attorney who is filing the patent application. This is the primary step in disclosing an invention. It arranges the inventor’s thoughts about the invention. A well-written invention disclosure form enables a company to avoid non-patentable inventions.[ii]
What is a patent search?
After invention disclosure, comes a step called as “patent search”. This could be said to be the heart and the soul of the entire patent application process. This step will determine the likely future of the application forwarded by the patentee to the patent examiner. Some of the reasons organizations need to conduct patent search are:
Patentability: Organizations need to conduct patent search in order to assess the novelty of the invention.
Research and Development: The patent search helps to discover new technology areas or improve extant products or processes.
Economic: In the fiercely competitive market, organizations need to monitor competitor activities to gain competitive advantage.
Financial: The patent search helps to avoid unnecessary costs spent on innovations prior to investing in the technology area.
Legal: Patent search determines the potential infringers and identify opportunities for licensing.
Marketing: Organizations need to gather information about new patents filed in the particular technology area, inventors, alive or expired patents, etc.
Thus, conducting a patent search is pivotal for organizations to define IP strategy, determine state of the art, check for freedom to operate prior to foraying into the market, and locating potential infringers for the purpose of filing law suits or earn revenues.[iii]
The process of securing a patent is set off by applying for the patent before the concerned authority (patent office/registrar). This is preceded by a process known as patent prosecution which comprises steps like drafting, filing, examination., etc. One of the most crucial and preliminary steps of patent prosecution is patent search which is the search of issued patents and published patent applications for inventions that might be considered important “prior art” references when applying for a patent.[iv]
Prior art search
There is a difference between a patent search and a comprehensive prior-art search (which is needed for patentability). A patent search is what it sounds like, a search for patent documents that might have import on one’s invention, but it stops there. There is an entire world of non-patent documents that must be considered as part of the broader “prior art” when performing a comprehensive search. Examples of non-patent literature are newspapers, magazines, dissertations, conference proceedings, websites., etc.[v]
Prior art refers to scientific and technical information that exists prior to the effective date of a patent application.[vi] It constitutes those references or documents which may be used to determine novelty and/or non-obviousness of claimed subject matter in a patent application.[vii] In simpler words, prior art is anything in the public domain, patented or not patented, that may determine whether an invention is novel or not. A patent searcher reviews the drawings and text of patents and patent applications to find inventions that may be similar to an inventor’s new invention.[viii]
Why is a patent search done?
A prior art search carries with it certain advantages to the patentee. It allows the patentee to get an accurate idea of just how novel and non-obvious the invention is. Later, the inventor can, accordingly, re-work his/her invention and patent application to enable the grant of a patent for the invention. Thus, a prior art search will help distinguish between what is already known (prior art) and what is new (invention). The secondary benefit of a prior art search is that an inventor can also use the findings to understand the prevailing state of art in his field of research. This will provide guidance on how the future scope of research could be.[ix]
How is a patent search done?
Patent search is the process of scouting out relevant information for a given invention that seeks to be patented. This information can be gleaned out from international databases, patent directories, search engines., etc. The more specific the inputs are during the search, the more
accurate the results will be. For instance, during the search, one may have to mention the key words of the invention such as “solar water heater” or “solar geyser” or “solar energy geyser”. This way the search engine/database displays all/any relevant patent-related information of similar products/processes including the status of their application, whether pending or granted.[x] Additionally, the searcher can also enter details such as application date, title, application number, patent number, filing office., etc. Thus, a patent search enables the individual to make an informed decision with respect to their proposal on the basis of their findings from the patent search.
It is critical to understand the objective of the search strategy prior to conducting a search in the patent and non-patent literature. The search can be carried out on both commercially subscribed and other data sources available online. Some of the popular and reliable patent search engines include “Google Patents”; “Espacenet”; WIPO patent database; USPTO patent database., etc.
The 5 patent search strategies include:
- Key string search – The key string search involves keywords to carry out the search in patent databases. The search includes identification of keywords that define the invention, locating terms that are synonymous to the words in the invention, and form key strings that are used in the search query in the patent database.
- Patent classification search – In the patent classification search, patents are classified on the basis of technical content so that the specific technology area can be identified easily. One has to identify one or more classes that are relevant to the invention. There are various classifications assigned to the patent applications such as CPC, IPC, US patent classification, and European classification (ECLA). The IPC codes can be identified using catchwords that relate to the invention. Often times, IPC codes yield large amount of data and generate a broader scope. However, the number of results can be reduced by including broad keywords.
Patent classification is generally used for patent examiners as they need to refine the search and identify relevant patent specifications.
- Citation based search – A patent document has backward (references cited by the patent document) and forward citations (references cited by current patent document). Attorneys should consider both forward as well as backward citations. Citations are references to the prior technology and can be extracted using key string search and patent classification search. Thereafter, analyse the cited documents to uncover more references and find relevant references among the citations to carry out citation search for the relevant patent documents.
- Assignee based search – This search is conducted by extracting a list of assignees/applicant names from the relevant databases. Then add the assignee name in the patent databases to gather information about the assignee/applicant who have been granted patents for their inventions. There might be cases where there are a smaller number of patents or a greater number of patents to their name.
- Inventor based search – The search involves extracting a list of inventors from the relevant documents and adding query in the database using the inventor’s name.[xi]
To summarize, a patent search can be conducted in 4 steps:
- Short-listing of keywords
- Exhaustive search of databases
- Extensive Internet-based search
- Analysis and interpretation of search results[xii]
[i] How to Get a Patent in India: Everything You Need to Know, https://razorpay.com/learn/apply-for-patent-in-india/ (last visited on Nov.5).
[ii] Senthil Kumar, India: Invention Disclosure Form, https://www.mondaq.com/india/patent/536742/invention-disclosure-form (last visited on Nov.5).
[iv] Frequently Asked Questions About Patents, https://www.planetpatent.com/frequently-asked-questions-about-patents/ (last visited Nov 5, 2021).
[v] How to do a Patent Search in 6 Steps (The Definite Guide), https://boldip.com/patent-search/ (last visited Nov 5, 2021).
[vi] Yumiko Hamano, Use of Patent Information (Prior Art) for Technology Management.
[vii] Understanding Prior Art and its use in Determining Patentability, http://www.uspto.gov/inventors (last visited Nov 5, 2021).
[viii] Supra 4.
[ix] Prior Art Search, https://iptel.iisc.ac.in/prior-art-search/ (last visited Nov 5, 2021).
[x] Bastiaan Koster, Basics of Patent Searching.
[xi] Supra 3.