How to prepare a Patent Search Report

A patent search is one of the most important stages both before and after the filing of a patent application. The most important aspect to look for while filing a patent application is the Novelty (meaning newness) of the invention. To determine the novelty and other requirements of an invention, a patent search needs to be conducted.

How to prepare a Patent Search Report

Definition

A patent search is one of the most important stages both before and after the filing of a patent application. The most important aspect to look for while filing a patent application is the Novelty (meaning newness) of the invention. To determine the novelty and other requirements of an invention, a patent search needs to be conducted. In most legal systems across the globe, patents are granted only if every information related to the invention is wholly and fully disclosed to the public. Thus, every patented invention has all the information available in the public domain. Hence it is always advised to search and analyze all the available information before filing a patent application so that after the filing of the application the chances of raising any opposition or objections get reduced.

Now one thing needs to be noted that, patent search is not limited only to searching for earlier patents (granted or published) in the patent databases. It also includes searching for other information or documents which are termed as Non-Patent Literature (“NPL”). NPL includes any data or information which are disclosed or available in the—

  • Web or internet

  • scientific journals and databases

  • Trade journal articles

  • Publications (including data books, catalogs, and Brochures)

  • Public discussions (conference and seminar)

  • Products, devices & equipment including product literature, etc.

The primary purpose of the patent search is to determine the scope related to the invention and to create a distinction between your invention and earlier inventions. This is similar to searching for a “Blank space” where you can mark your “territory” which had not been claimed before by others.

Classification

A patent search can be broadly classified into four categories. Let us look into these four categories one by one—

  1. Novelty search/patentability search/prior art search: The patentability search is done in two stages. The first one is done in the pre-filing stage by the applicant or the inventor. The second time it is done by the Patent Office. Most of the applicants sought for Patentability search because it helps to determine the patentability of an invention before applying for patent protection. Patentability analysis helps in drafting a patent specification and claims, highlighting the novelty of the invention and inventive step.

  2. Free to Operate (FTO) search/Infringement analysis: Many times a company would like to produce a product and bring it to market without the intention to patent the product themselves. But they want to make sure that they are not infringing any third-party patent rights or they do not wish to get sued by someone else that might have already patented the idea. For this purpose FTO search or infringement analysis is conducted to mitigate the odd chances.

  3. Validity/invalidity analysis: Patent validity/patent invalidity search is performed after grant/issuance of the patent. Both patent validity and invalidity follow the same methodology but have different purposes. A patent validity search is conducted to validate the imposition of the patented claims. While the patent invalidity search is conducted to limit the scope of the earlier granted patent or to prove that the opposing earlier granted patent is invalid. Further, it is also performed to invalidate one or more claims of subsequent patent applications or to file a post-grant opposition to a subsequent patent or to use the invalidation report in the patent litigation proceedings.

  4. Patent Technology Landscape: Patent Technology Landscape analysis enables the applicant to understand the market of the particular technology, the ongoing development of that technology, and the market competitors involved in that technology development. The study helps a client to take important decisions and strategies involving the R&D of a product, investing in certain areas of technology, identifying patent trends, understanding the competitors’ strategy amongst others. It also gives one a brief idea about where the product will stand in the market if launched. It helps the companies in deciding whether it should invest in R&D to develop that particular technology.

     

Patent Technology Landscape analysis also makes it easier to identify the area which has more competition meaning thereby more patent problems and the areas with relatively lower competition meaning thereby easier patenting and market monopoly.

Preparing a Patent Search Report

Patent Search Report can be prepared by two sides—

  • The applicant side

  • The patent office side, also known as First Examination Report (FER)

For the purpose of patent search, there are free and open-source databases available for public searching. These databases include InPass (India), Patentscope (WIPO), Google Patents Search, USPTO (United States of America), Espacenet (Europe). Also, there are country-specific patent access systems that are accessible through the internet.

The searching in the databases is generally done using keywords or search strings. But other methods such as using classification, publication number, the application number, patent registration number, Boolean operators, etc. are also available. After the searching is completed, there can be multiple results that may refer to that searched keywords; but only the relative results (“Reference”) should be accessed. The databases include all the documents filed for those relevant search results. After searching and analyzing those search results, a Patent Search Report is prepared generally in a tabular format. This report includes—

  • The registration/application number of the References (published or granted)

  • The date of filing

  • The date of publication

  • The name of the applicant and the inventor(s)

  • The title of the References

  • The field of invention and classification

  • The country of References

  • The subject matter of the References

  • The problem that the References seek to solve

  • Brief descriptions of the References

  • Number of claims in the References

  • Number of References’ claims similar to the applicant’s claims

  • The similarities between References’ claims and applicant’s claims

  • Present industrial application of the References

In a patent, the claims constitute the most important part of that document. It determines the scope of the earlier patent (i.e. defines the boundary of the claimed “territory”). Therefore, the more the number of claims of applicant’s invention is similar to the References’ number of claims, the lesser the chances are for applicant’s invention getting patented. This is exactly why the Patent Search Report is so important. It helps the applicant or the patent attorney of the applicant to draft the claims cleverly in a more specific manner so that it differs from the claims of the References.

The FER also, on the other hand, covers almost similar aforesaid points. In addition to that, the FER may also contain—

  • Novelty, inventive step, industrial applicability of the applicant's claims

  • The substantive legal requirements, procedural requirements related to the invention by the applicant

  • The requirements related to the filing of proper response to the objections

  • Any other requirement that the Controller may direct the applicant to furnish

The FER is given only in the case where an applicant has filed a patent application. One thing to note here that no hard and fast rule needs to be followed while preparing a Patent Search Report. The only methodology that is followed is that the report should clearly state the objections, from where the objection comes, and the requirements that may help to overcome the objections.

Conclusion

Preparation of Patent Search Report is not mandatory for the applicant to perform in order to file a patent application. However, it is strongly recommended by the professionals in this field to conduct such at the earliest. Patent searching helps to mitigate the risk of unnecessary costs suffered by the applicant. It also enables the patent office to save precious time and reduces the pendency of applications. Preparation of Patent Search Report or doing a patent search can be done by any individual including the applicant alone. Nevertheless, it always highly recommended engaging any professional to do the job. This is because the patent is a very complex techno-legal document that requires skills to analyze and perform the task. Also, the professionals are highly experienced in the field who can provide suitable advice according to the client’s requirements. In this era of start-ups, everyone wants to protect their inventions through patents and thus oppositions are expected. Therefore, it is better to research beforehand than to get stuck into long-lasting litigation battles later.

know more about, patents law, see the video below-

 


 

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DEBKRIPA BURMAN