Patent Search

How to create a Patentability Search Strategy

Patentability Search is also known as Prior Art Search or Novelty Search. The purpose of this article is to show How to create a Patentability Search Strategy that includes from Identifying Patent Classifications to developing a patentability search and more…

Introduction

The objective of patentability search strategy is to ascertain the chance or likelihood of an invention getting a patent especially on the worldwide criteria of novelty and non-obviousness. The scope of the study includes searching both patent and non-patent literature to identify references that are relevant and related to as prior art to the current invention.

If the patentability search results in identification of documents disclosing inventions similar to the invention searched, the scope of the invention can then be modified for further searches based on the references identified.

The purpose of a patentability search that include all types of prior art is to discover prior art and determine if the subject matter is patentable or not. Keep in mind that It save your unnecessary cost on patent preparation and prosecution.

Creating a Patentability Search Strategy

Let us take an example of an invention in the domain of Electronics, Telecommunication, and Business Method, for which a patentability assessment has to be carried out, which means identifying any document where the novel and inventive aspects of the invention are covered. It is important to understand that for patentability, the document recovered must be specific and narrow in terms of matching of the invention aspects and matching information in the document identified as relevant.

In the first example, we will also give step by step comments and indicators related to the creation of search strings.

Understanding the Invention

A device for

  • Reading or swiping a payment card (such as debit card or credit card) via magnetic stripe or chip using the ‘card present methodology’;
  • Attaching or connecting to a mobile telephone which has internet connectivity using a TRS (tip, ring, sleeve) connector or a Universal Serial Bus (USB)
  • Verifying or authenticating the payment card information through internet connectivity enabled in mobile telephone
  • Allowing the user to enter debit card or credit card information without it being stored in the system; and
  • Allowing a transaction to be executed if the authentication and verification is done at the host server’s end

Creating the Invention Statement and Generating Keywords

If the invention were to be put down in a single statement in the form of an invention statement, it could be:

A device for allowing swiping of a credit card and connect it to a mobile phone for processing a transaction using internet connection on the mobile phone.

It can be noted that aspects such as type of connector; verifying, or authenticating the payment card information; have not been included in the invention as they do not seem to be the essential aspects of the invention. Once the searcher identifies a document with information matching the invention statement, then the additional aspects of the invention can be looked up in the identified document.

Accordingly, the key aspects and additional aspects of the invention shall be used to formulate the search strategy.

Identifying Patent Classifications

To create a robust patentability search strategy, the best practice is to have at least one search string using a relevant patent classification. As mentioned in Chapter 3, patent classifications could act as a suitable replacement to use instead of certain keywords while specifying the technical domain relating to the invention.

To identify the relevant Patent Classifications, the approaches mentioned in Chapter 3 are taken, and the following IPC and US Classifications were identified

Relevant IPC Codes Identified
S.No IPC Classification Details
1 G06Q 30/00 Commerce, e.g. shopping or e-commerce
2 G06K 7/00 Methods or arrangements for sensing record carriers
Relevant US Classification Codes Identified
S.No USCLA Classification Details
1 235/380 Registers -Credit or identification card systems
2 235/439 Registers -Particular sensor structure

Developing the Patentability Search Strategy

The below search strategy is an indicative and exemplary approach to the study which involves a series of search strings. It can be observed that certain iterative searches are carried out to broaden and narrow the search strings using operators and variation of search fields. Classification based searches are incorporated to provide robustness to the searches.

The Search Strings highlighted in Bold font are the ones which are finally used for obtaining an analysis set.

S.No Search Strings
(where T-Title, A-Abstract, C-Claims, D-Description, UC-US Class, IC-Int. Class)
1 TACD:((mobile OR cellular OR cell OR portable) AND (phone OR communication) AND (payment OR purchase OR purchasing OR shopping OR shop OR buy OR buying OR mobile wallet OR epayment) AND (online OR internet OR GPRS OR wi fi OR wifi AND card)
2 TACD: ((mobile OR cellular OR cell OR portable) AND (phone OR communication) AND (payment* OR purchas* OR shop* OR buy* OR mobile wallet OR epayment) AND (online OR internet OR GPRS OR “General packet radio service” OR wi fi OR wifi) AND (card OR cards) AND (credit OR debit OR visa OR mastercard OR master card OR maestro))
3 TACD:((mobile OR cellular OR cell OR portable) AND (phone OR communication) AND (payment* OR purchas* OR shop* OR buy* OR mobile wallet OR epayment) AND (online OR internet OR GPRS OR “General packet radio service” OR wi fi OR wifi) AND (card OR cards) AND (credit OR debit OR visa OR mastercard OR master card OR maestro) AND (device OR gadget OR instrument OR component OR system))
4 TA: (mobile OR cellular OR cell OR portable) AND (phone OR communication) AND (payment* OR purchas* OR shop* OR buy* or mobile wallet OR epayment)
AND
C: (card or cards) AND (online OR internet OR GPRS OR “General packet radio service” OR wi fi OR wifi)
AND
TACD: (credit OR debit OR visa OR mastercard OR master card OR maestro) AND (device OR gadget OR instrument OR component OR system)
5 TA: ((mobile OR cellular OR cell OR portable) AND (phone OR communication) AND (payment* OR purchas* OR shop OR shops OR shopping OR shoping OR buy OR buying OR mobile wallet OR epayment) AND (online OR internet OR GPRS OR wi fi OR wifi) AND (card or cards) AND (credit OR debit OR visa OR mastercard OR master card OR maestro))
6 TACD: (mobile OR cellular OR cell OR portable) AND (phone OR communication) AND (payment* OR purchas* OR shopping or shop or buy or buying OR mobile wallet) AND (online or internet OR GPRS OR wi fi OR wifi) AND (card OR cards) AND ((TRS OR “tip ring sleeve” OR “Universal Serial Bus” OR USB) w5 connector) AND (swipe OR swiping)
7 TA: (“3.5 mm” OR “3.5-mm” OR “3.5mm” OR TRS OR “tip ring sleeve” OR “Universal Serial Bus” OR USB) AND (credit card OR debit card OR payment card OR visa OR mastercard OR master card OR maestro) AND (phone OR mobile OR portable or wireless OR cellular)
8 UC:(“235/380” AND “235/439”)
9 IC:(G06K7* AND G06Q30*) AND
TACD: ((mobile OR cellular OR cell ) AND (device OR gadget OR instrument OR component OR system) AND (online OR internet OR GPRS OR wi fi OR wifi) AND (card OR cards) AND (credit OR debit OR visa OR mastercard OR “master card” OR maestro))

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