Patentability Search

What is a prior art search?

A prior art search is a search conducted to determine the chances of getting a patent granted for the invention. Based on the results of the prior art search, the applicants are in a better position to decide whether to file / prosecute their applications further considering the substantial amount of time and money which is generally involved in the patent process.

Though it is optional for the patent applicants to conduct a prior art search, it is highly recommended to do so.

What is prior art?

Prior art as the name suggests is any information known to the public prior to the date of the patent claims.

A patent applicant cannot get a patent granted for something which was known to the public before the date of filing of the patent application. This ensures that a patent applicant gets a limited time monopoly only in exchange for something which wasn’t already known to the public.

The Importance of a prior art search!

During the patent process, a prior art search is generally performed at two instances, which are:

1. During examination (mandatory)
2. At the time of filing a patent (optional)

1.      Prior art search during patent examination

A prior art search is always performed by an examiner during the examination process. The examiner tries to find all such prior art references including patents and non-patent literature which will negate the chances of getting a patent granted and it is the duty of the patent applicant or their patent agents / attorneys to prove how their invention is different from the prior arts cited by the examiner in the examination report.

2.      Prior art search at the time of filing a patent

Since, an examiner will always conduct a prior art search during the examination process, it is equally important for a patent applicant to also conduct a detailed prior art search, ideally before the filing of a patent application. Though conducting a prior art search is totally optional but it is highly recommended. An initial prior art search serves two important purposes:

1. Fine tune the patent application – It helps the patent applicant to understand the current state of the technology. And then the inventors based on uncovered prior art can try to fine tune their applications in such a way that the patent application doesn’t claim something which is already known.
2. Decision on filing a patent – In case where the invention can’t be modified appropriately and the chances of getting a patent are slim, the patent applicant can exercise the option of not filing a patent application and saving considerable legal expense.

Hence, it is always a good idea to do a search before filing of a patent application. Doing a search prior to filing can give you a good idea in terms of the chances of getting a patent and also helps to decide whether it is worthwhile to file a patent or not.

In case performing a prior art search before filing is not possible because you need to urgently secure your priority rights by filing a provisional patent application, you are still advised to perform a search immediately after filing your application. This way, if the search comes out to be negative, you can avoid future costs like foreign filing, complete application drafting, etc.

Components of a prior art search – Are prior art searches and patent searches the same?

As per the definition of a prior art discussed earlier, prior art includes any information which is known to the public. Hence, it includes both patent and non-patent literature.

If you wish to know more, please refer to the inventor’s handbook by the EPO for a simple explanation of prior art.

Patent searches

As mentioned earlier, patents are a subset of prior art. As the patent data is easily accessible, logically arranged and available for free on various databases, it makes sense to start with a patent search.

Process of performing a patent search

Performing a 100% complete patent search is not a practical task due to the sheer number of patents filed worldwide over the years. Hence, it is important to draw a balance in terms of the amount of time spend vis-à-vis the kind of patents uncovered during the search. So, patent searchers have come up with various search strategies and processes to speed up the search process and uncover key patent references.

If you are planning to perform a search yourself, then the first thing you need to factor in is the amount of time you are willing to spend on the patent search. A typical patent law firm may spend anywhere between 3-7 working days on a patentability search to ensure that all relevant patent results are captured. Based on the amount of time you are willing to spend; you can iterate on the below mentioned process. Important thing to note is that the chances of missing a result will also increase if you spend less time.

Considering the best methods used by expert patent searchers, the following search activities should be performed to find the most relevant patents in the shortest amount of time:

1. Identification of keywords / concepts related to the invention – Make sure to brain storm and form a thorough list of keywords / concepts. Also, work on finding the synonyms, alternatives, spelling variations, etc. to cover as many possibilities as possible.

2. Performing a specific keyword search – Performing a keyword search is the fastest way to uncover results which are similar to your invention. However, if the patent drafter had used an alternate word / phrase to describe the same concept and that keyword is not part of your list (refer step 1), then you may miss that patent result which may later pose as a critical hit to your patent application.

3. Performing a classification search – Every patent application which is filed is classified by the patent examiner in a relevant class. Performing a classification search helps to ensure that you end up finding every relevant reference even if it is missed during the keyword search.

A classification search can be conducted by identifying the relevant class from the internationally accepted International Patent Classification (IPC). During the class shortlisting process, read the class title and description. If you identify a class which you are not sure about, it is a good idea to quickly go through the title, independent claim and abstract of the first 100 odd references to decide if it is worthwhile to include the class or not.

Once, you identify the relevant class(es), you should go through all the patents / applications for that class to ensure that you don’t miss any relevant reference.

If you are pressed for time, a quick way to identify some relevant classes would be to look at the classes of the shortlisted patents identified during the keyword search (refer step 2). This way you can reach the relevant classes much quickly and use it to identify other relevant classes.

4. Citation search – A citation search helps to uncover closely related patents based on their relationships with other patent references.

Many of the electronic databases available online provide the option of forward and backward citations. Forward and backward citations can be understood with the help of a simple example:

Suppose you found a patent reference ‘Y’, and ‘Y’ cites ‘X’ in the patent document. Then ‘X’ becomes the backward citation of ‘Y’ and ‘Y’ is the forward citation of ‘X’.

A simple forward and backward citation search will help you uncover very similar patents related to your shortlisted reference in a quick time.

5. Broaden the search – The objective of conducting a search is to identify relevant prior art references. If after conducting steps 1 to 4, you are still not able to find relevant patent references, then you need to broaden your search strategy. To broaden your search, include broader keywords, wider classes and also include non-patent literature search.

Patent databases for conducting patent searches

A patent search involves searching of patent data across the world, however, is limited to patent databases of countries for which the data is accessible. In this age of internet, almost all prior art searches happen online since many of the patent databases are now online. The patent data can be searched using government patent databases and third party patent databases. Each of such databases collate patent data from multiple countries and make it available for the public for searching.

Popular government patent search databases:

• Patentscope by WIPO– WIPO is the international organisation which has built a comprehensive patent database, Patentscope, in association with national patent offices of many countries and is one of the most comprehensive patent government database in the world. However, Indian patent data is still not part of the database (as of 18^th July, 2016). If you want to rely on a government database only, performing a WIPO patent search on Patentscope is a good option to start.

• USPTO patent search database – The official US patent office is home to a large number of patent applications and granted patents in the world. Since, US is a major market for many applicants, it is highly likely that a corresponding patent exists in US. Hence, conducting a search for US patents is always advised. Many of the other databases like WIPO, Google Patents, Free Patents Online include the US patent data. You can search for US patent applications on USPTO patent search database.

• inPASS – Short for Indian Patent Advanced Search System is the patent search database for Indian patent data. The database includes only Indian patent applications and granted patents and is useful for conducting Indian patent searches. However, for a thorough patentability search, it has to be supplemented with another search database like WIPO or Google patents to cover additional countries patent data.

Popular third party patent search engines:

• Google Patents – Google patent database provides patent data from US, WIPO and many other countries but not India. The database provides for a simple search interface for searching patent data from multiple countries. Patents which are not in English are machine translated by google and also available for review. The database also provides the option of performing a non-patent literature search on Google scholar.

• Free Patents Online – Free Patents Online is third party patent database which provides for a simple natural language search option for viewing results from WIPO, US, EP and a few more countries and also non-patent literature. However, Indian patent data is not part of the list.

• Questel Orbit – It is a proprietary database available on a subscription model. The database has a wide coverage and provides additional tools like analysis to streamline the patent search process and is used by patent searchers in law firms and companies. This database includes Indian patent data amongst other major countries.

• Thomson Innovation – Another proprietary database which is available on a subscription model. The tool offers a wide range of patent data and includes DWPI which facilitates in faster understanding of patent documents. This database is also a popular choice with patent searches in law firms and companies.

Please note that the list of patent databases provided above is not an exhaustive list and many newer databases are entering the market.

Cost for a patent search in India

Like any service if you want an expert to help you with a patent search or a detailed prior art search, you should be ready to bear costs for that. Here, we have given you an idea of the search process used by patent search experts and some patent databases available for free.

If you want to save money, you can decide to perform the whole patent search yourself and save decent amount of money. However, if you believe you don’t have the time and are not confident enough, then you should be prepared to spend anywhere between ₹10,000 to ₹35,000 for a patent search in India depending on the patent firm you hire. (Also read: The average cost to get a patent in India.)

If you need help in hiring a quality patent search company, please share your requirement with us and we will help you get connected with a premier patent search service firms in your budget (we don’t charge any fees for helping J)

Limitations of a prior art search

Even though we have discussed the best scenarios for conducting a patent search or a prior art search, it should be noted that a prior art search can practically never be 100% complete. A prior art search is always limited to documents which are available for search. Anything which is oral can’t typically be searched either by the examiner or by patent experts while conducting prior art searches.

Further, every patent application goes through an 18-month period during which it is not published by the patent offices. Only, after a patent is published, it is available in patent databases for search. Hence, the risk of a patent filed earlier than yours but not yet published is always there. And this risk is taken by all the patent applicants around the world.

Even though a complete search can’t be done, performing a comprehensive search on the information available should be undertaken to reduce risks

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