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Patentability search, otherwise known as Novelty search, helps determine whether an invention can be patented and what patent or non-patent literature documents would be relevant to that evaluation. The search seeks to establish any public disclosure of the inventive concept, anywhere in the world before the date of the invention under study. A patentability search is valuable before filing a patent application and helps to form a strategy to go for the patent application. The report helps to decide whether to pursue patent protection. The closest prior art found in a novelty search can also indicate any problem which may arise during patent prosecution and assists in constructing claims of your invention without stepping on known prior art.
A patentability search report is read by different stakeholders or clients like a patent attorney, inventor, or even your reviewer or manager, and it should be legible to all of them. This article discusses some best practices for a patentability search report to convey the information in a concise, clear, and accurate manner. It is in no way an exhaustive step-by-step list but a navigational aid to point patent searchers in the right direction
Scope of the Patentability search
For a patentability search, a searcher focuses on the two prerequisites for getting a patent granted – Novelty and Non-obviousness or Inventive step. The searcher tries to find evidence that would put into question whether the invention is new or novel or whether it would have been obvious to those skilled in the technology area at the time of the invention.
The search should be in full patent specifications and all technical and non-technical publications. In other words, any written documentation that comes before the filing date of the invention or the present, if not yet filed, covering the features of the invention under study. So, no date constraint on the search. Similarly, no jurisdiction restriction since novelty and non-obviousness criteria is absolute across the globe.
What should be included in a Patentability Search Report?
- Background of the invention and key novel features to be mapped
Provide a summary of the invention disclosure, the search focus, and the key aspects that were mapped in the retrieved data.
- Search technique or methodology
- Include what type of searches you performed like keyword search, classification search, combined keyword and classification, semantic or similarity search, assignee and citation search of the closely related documents, etc.
- The report should include what data sources or databases you have used for the patent and non-patent literature searches.
- Search strings – Providing all the exploratory search strings without any explanation in the search report will confuse your client. On the other hand, do not include just a single representative strategy or just a wordy explanation of what was done without any illustrative query. Give a consolidated search string with all your search elements whose results you have reviewed. Include the total number of references reviewed for each of the search strings.
- The report can also include search term synonyms for the features, and the glossary of the different search operators used, to aid in understanding the search strings.
- Include the current class definitions along with the codes searched.
In PatSeer you can not only export all the search strategies along with hits obtained for a particular project, but also the class definitions of the codes included in your search. This saves valuable time by preventing you from copying and pasting the class definitions from different sources. PatSeer provides both semantic and similarity search which are essential to your patentability searches apart from the keyword, classification, assignee, and citation search.
- Categorisation of the reference documents
There are different ways of providing pertinent references in the search report. Many follow the pattern of classifying the documents like the international search report based on type and relevancy level to the invention in question. Example the “X” or “Y” category documents in international patent search reports. X category denotes that the single reference discloses all the novel features of the invention under study, directly affecting the novelty. Y category is for documents that disclose one or more features of the invention in question where combining these documents with other “Y” documents may show the absence or presence of inventive step. Others just classify the documents into most relevant, related or similar, distantly related, not related based on the extent of mapping of the novel and inventive features of the invention to the reference. The most relevant document affecting the novelty and obviousness criteria. All the bibliographic details of those documents are also provided in the report. An annexure that lists out all the other relevant documents which cover the same features as the documents listed in the report can also be supplied.
- Comparison of the invention features to those disclosed in the prior art
A feature-wise analysis of the identified prior art documents can be provided which helps in understanding the scope of protection. The search report can also highlight where exactly in the prior art document a feature was found. A commentary on the similarity and differences of the closest prior art to the invention features can also further help the client comprehend the comparison
- Result or conclusion
A conclusion is presented in the report considering the retrieved prior art. Some patentability search reports additionally include a patentability opinion by a patent legal professional that identifies and defines the inventive and novelty aspect of the new product or process over the prior art available in the public domain.
Novelty searches are inherently complicated, but a good novelty search report should strive to explain or communicate this complex content in a manner that is concise and easy to understand. We hope with this article, patent research professionals can execute a more informative and clear patentability search report which is an easy read for their clients.
PatSeer with its comprehensive data coverage, 200+ searchable fields, powerful syntax and semantic search, and Non-patent literature search is an ideal platform for your Novelty searches. Try PatSeer and experience its latest features by filling up the enquiry form below.
