A Patentability search is conducted on an innovative idea, disclosure, or preliminary set of claims to determine if the idea has a chance of being patented in the near future with extensive knowledge about what already exists in the domain or field of the invention.
For an invention to be patentable, three major requirements must be fulfilled.
A novelty search is another term for a patentability search. There is, however, a subtle distinction between patentability and novelty search. A novelty search is typically a limited search conducted on a rough draft of the invention to determine whether or not there are any unique features in the invention or whether or not the invention is non-obvious.
This novelty search is then followed by a high-budget patentability search for inventions that have shown some indication of novelty. Before submitting the application for examination in the patent office, a preliminary draft of the claims or a provisional application is used to conduct the patentability search. The results of the patentability search aid in the preparation of the final claims of the application to be filed with a patent office before it is examined.
This search also aids in establishing claim boundaries that define the scope of the invention’s claims. The search yields documents/patents, also known as prior art, for the applicant/inventor to cite in the application and serve as background knowledge.
The Importance of Patents
Unlike a research paper, a patent grants its owner exclusive rights, preventing others from using the inventor’s idea. A party who wishes to implement, use, or benefit from a patented invention must obtain a license or approval from the patent owner.
The patent owner earns a profit from patent commercialization when they or others use, manufacture, sell, or profit from an invention that has been patented. Patent holders can also license their patents to other entities in exchange for royalties by granting or allowing rights to the patented invention. As a result, a patent restricts other parties/entities from exploiting the innovation without the permission of the patent owner.
The need for a Patent
To prevent others from utilizing one’s invention without their consent or knowledge and profiting from it through selling, manufacturing, or monetization, one must file a patent for their invention. The patent will protect your intellectual property from infringement, also allowing you to earn royalties from it.
What is a Patent?
Before we proceed, we must first understand what a patent is. What exactly is a patent and how is it used?
A patent is a type of intellectual property that grants its owner the right to prevent others from making, using, or selling an invention for a set period of time in return for publishing a disclosure of his or her innovation.
To obtain patent rights, one must follow a few steps outlined by the regional patent office. All offices follow a procedure to determine the worth of an invention by assessing its novelty, uniqueness, and utility to the public.
These steps can be summarized in the sentence “what is a patent search” or what are different types of patent search?
What is a Patent Search?
A patent search, also known as a patentability search, broad landscape search, novelty search, or prior art search, is a search conducted to identify citations of similar nature to that of one’s invention. Patent searches focused on patents found in databases such as Google Patents, Espacenet, Orbit Intelligence, Thomson Innovation, CNIPA, J-PLATPAT, XLSCOUT, and others.
At XLSCOUT, we have access to more than 150 million+ patent publications from over 100+ jurisdictions. Depending on your needs and requirements, you can conduct a patent search on XLSCOUT’s patent search platform. XLSCOUT also has a prior art search or a patentability search tool called Novelty Checker.
A patentability or novelty search is conducted based on the disclosure or important aspects of your invention if you want to know whether your innovation is new, unique, and can be patented.
A prior art search can be performed to determine whether something already exists before filing the invention.
A landscape search or a state-of-the-art search is conducted if you want to explore a specific area or field and want to know what are the key technologies in the area, major players, trends, and so on.
A patentability search determines whether your patent is eligible for a grant. If not, one can build around their invention using the idea obtained from a patent search.
It is critical to conduct a thorough search for prior art information before filing a patent with a patent office. This step in the application process assists a person in avoiding the wastage of time and resources by applying for protection for something that already exists in some form or another.
Searching for patent information can be difficult, time-consuming, and expensive. To obtain specific assistance or advice, one should contact an intellectual property (IP) professional or an organization that deals in this business, such as XLSCOUT’s AI-based Novelty Checker that generates quality prior art search reports within a few minutes to assist you in performing patent searches and also provides you complete IPR & Patent Prosecution Support from Ideation (Novelty Checker), Patent Searching, Patent Drafting, Patent Filing, to Patent Prosecution as well.
Why conduct a Patentability Search?
You may think your innovation is unique, but you won’t know for sure unless you conduct a patent search. If there is anything even remotely similar to your innovation, you might not be able to obtain a patent.
A patentability search’s primary goal is to project the likelihood of an invention being granted a patent, particularly when compared to international standards of innovation and non-obviousness.
Because it takes a significant amount of time and money to develop an invention, the creator should ensure that no one else has claimed the innovation before filing their application for examination.
During a patentability search, “prior art” for similar devices and methods that predate the invention is reviewed to determine whether it seems to be innovative and non-obvious.
The prior art includes all public disclosures made before the filing date of a patent application, including US patents and patent applications, foreign patents and applications, web pages, advertisements, and any physically made goods or previously given services. It is also possible to search for non-patent literature.
Even if a patentability search reveals that the invention is not patentable, it could still yield useful information for drafting a patent application. The results of the search will reveal prior art that is close to the invention, allowing for a patent.
The Importance of Patents?
The application will be written with that prior art in mind. If the prior art is similar to the invention, despite the prior art, the patent application can emphasize parts that are patentable or unique, novel, and not obvious to a person knowledgeable in the art.
If a patentability search had not been conducted, too much time (and money) would probably have been invested in the application detailing aspects of the invention that are unlikely to be patentable, while insufficient time would have been spent trying to discuss aspects that are more likely to be patentable.
patentability search will frequently turn up prior art that illustrates that the innovation under consideration for a patent application is not unique, or that it is simply a variation on what others have done. Filing a patent application on that invention is pointless in these circumstances since it does not meet the criteria for patentability.
A single patentability search costs around $2,000, and a patent application costs between $8,000 and $14,000, so discovering that an idea isn’t patentable can save a significant amount of money.
A patentability search is essential for the following reasons:
- A patentability search can assist the inventor in better understanding the scope of the invention.
- It can help the patent drafter with claim drafting by offering more knowledge of the innovation than the prior art.
- The candidate can be more prepared to react to rejections, that may or may not occur during the examination phase.
- It is feasible to avoid working on an already patented innovation. As a result, you will save time and money on the time-consuming and expensive patent application process.
- Identifying what inventions already exist can help you avoid infringing on another company’s patent. As a result, there will be no FTO (Freedom to Operate) issues.
- Existing patents may provide you with ideas on how to improvise your innovation and distinguish it from others.
- You can learn about the inventions of your competitors and get ideas for potential business risks, partners, or investors.
- It’s probable that a competitor’s patent will be found to be invalid.
Why Should a Patent Search Be Conducted?
Before releasing a new product into the market, one should consider the following:
- Can a patent protect an inventor’s invention?
- Does an individual’s invention infringe on the invention of another?
Searching can assist in answering these questions as well as:
- Determine who owns what intellectual property
- Ensure that an individual’s intellectual property is not being infringed upon
- Gather competitor product information for research or design purposes
Each patent document contains a detailed description (with illustrations) of an invention as well as details of the inventor and applicant. Over forty-million patent records have been published globally.
A patentability search is a kind of patent search that provides an important indication of whether or not an individual innovation will qualify for a patent. The search enables you to compare your invention to previously published works known as prior arts.
The patentability search is the most popular of all patent search types. It is commonly referred to as a novelty search or a prior art search.
Its goal is to ensure that your innovation has not already been used, created, published, or disclosed in any form by anyone. The search allows you to evaluate your invention in comparison with the previously known prior art. This includes prior patent literature as well as non-patent literature.
Furthermore, the novelty search and the state-of-the-art search are connected. A state-of-the-art search offers an in-depth look at technology in a specific sector; one can conduct the state-of-the-art search and then mold their research and design team with innovative ideas by analyzing the study’s results.
White space analysis ideas can be used to dive deep into a specific field.
A patentability search is not the same as an invalidation search. Invalidation searches assist in determining whether a patent is invalid, particularly if it has been already disclosed by others in any form, such as patents or non-patents, before the subject patent’s priority date. It is possible that other literature may invalidate a patented invention.
Importance of Patentability Search
Some of the key advantages of this type of search are as follows:
Examining prior art, exemplary patent applications, and non-patent literature within the same technological field will help you draft your patent application correctly and avoid being invalidated in the future.
You can forecast some of the objections that a regional patent office may raise against your patent application by comparing it to the prior art. You can prepare replies to these objections, which are commonly referred to as “office action responses.”
The information gathered during the search process will be useful in answering the question of why your patent is valid or whether you have a chance to overcome any rejections made by the patent office while examining your patent application.
The search will assist you in directing attention to the novel, non-obvious, or obvious aspects of your innovation. This will allow you to engage more deeply with your technology since similar arts already exist, rather than wasting time and money on an application that will be useless.
A patent search in the right direction will increase the chances of getting a patent granted.
The search results will add significance to your existing invention while also making the examination process easier. One can get proper insights and build it better, and after the patent is granted, one can commercialize it in the market and get an effective patent value in the form of monetary benefits.
Prior art searches can be conducted in two ways: first, only for patent literature; or second, for any written or printed form material before the required time, and such arts are known as non-patent literature.
Even if you believe your invention is unique, you must conduct a patentability search. There may still be prior art that is sufficiently similar to your innovation to prevent you from obtaining a patent.
Since prevention is always better than cure, one should always try to conduct a novelty search on their own or by seeking assistance from any firm that provides patentability tools, like XLSCOUT. XLSCOUT provides Novelty Checker, a prior art search or novelty search tool that provides first pass prior art analysis along with an automated novelty search report or a first pass prior art search report.
What is prior art, and what types of the prior art are searched?
During the search, any document in the public domain that includes the important features of the invention according to the client/applicant/inventor requirements, whether it is a granted patent, a patent application, or a non-patent citation existing on or before the present day when the search is conducted, is considered prior art, also known as background art. Non-patent references include research publications, theses, standards, white papers, e-mails, conversations, newsletters, products, articles, videos, blog posts, and other internet publications, among other things.
Where to look for Prior Arts?
Various paid and/or unpaid databases can be used to identify these patent and non-patent citations. XLSCOUT, Orbit, Derwent, Patsnap, Lens.org, Google Patents, Google, IEEE, Google scholar, IETF standards, 3GPP standards, ETSI, Espacenet, J-PLATPAT, KIPRIS, CNIPA, and others are among these databases.
How to perform Prior Art Search?
There are several ways to search for prior art, depending on the database. One method can be using an automated search tool like XLSCOUT’s Novelty Checker in which either the innovation disclosure or the drafted claim features are entered, and an AI-based novelty search tool takes over thereafter to identify all the related or relevant possible prior arts.
Following that, we can conduct manual searches by creating search strings or queries that include all of the invention’s important keywords. These can then be used to form further search strategies by identifying the major assignees and/or important patent classifications associated with the invention.
We can also search for additional related prior art presented based on previously identified relevant prior art. Furthermore, each of these databases has its methods for creating search strategies.
Furthermore, if the client has already had some patents or papers published relating to the same technology, those references can be identified and used to help guide the search to the closest possible prior art.
- Competing Prior Arts
We understand that inventions are solutions to existing problems and that a single problem can have multiple solutions. These documents, comprising the solution to your invention, serve as competing for prior art and can have a significant impact on amending your innovation to make it novel.
- Prior Art Analysis
The next major task is to analyze the references once the first phase of the search is completed, i.e., extracting the closest references from all possible research techniques. The finest potential reference from the above would be a single reference revealing all of the invention’s key elements and novelty.
Furthermore, placing relevant text in front of each key element of the invention improves understanding and analysis. The next option is to find a combination of several references that can cover all of the key aspects and novelty.
If no references are found that disclose the novel properties of the innovation, then the closest citations help draft the patent application and refine the claims to include the novel feature.
How to Determine if Anything is Patented?
If you come across granted patents or patent applications that disclose the novel feature or features of your innovation during your search, it means that the innovation has already been patented and that your invention is not patentable. Similarly, many such breakthroughs, including inventions, ideas, and documents, are never patented and thus exist in the public domain. These documents also serve as prior art, making the current invention unpatentable.
Furthermore, to determine whether a product is patentable, the assignee of the product must be identified. Next, search a patent search database like XLSCOUT or Google Patents for the assignee’s portfolio. If the total number of patents in a company’s portfolio is small, each one can be analyzed to determine the patent for the product.
However, if the company’s portfolio is quite large, search key strings containing keywords or elements for product features must be searched to output and analyze a manageable number of hits. Furthermore, since the novelty of innovation is claimed, one can also go through the title, abstract, or claims of the patents to analyze the citation in much less time, and one can identify a relevant patent after analyzing the claims.
Furthermore, various IP laws are taken into account when conducting a patent search. Jurisdictions apply to these laws. These laws are based on an invention’s novelty, obviousness, and usefulness.
How to Conduct a Patentability Search?
There are millions of patents in the world. To uncover all of the information, you must conduct a thorough patentability search. To find the most relevant information, you should:
Use a variety of search engines:
- Free Patents Online
- USPTO database
- Google patents
- XLSCOUT’S Expert Patent Search
- Novelty Checker by XLSCOUT
Each of these has its own set of advantages. Free Patents Online provides PDF documents with handy hyperlinks. Google is quick and has a wealth of information dating back many years. The USPTO database is a government-approved source. XLSCOUT patent search tool has a patent database of more than 150 million+ patent applications and 220 million+ research publications.
By using each patent search engine’s tutorials, help sections, and advanced search features, you’ll learn techniques to improve the effectiveness of your search.
During the search, one should try to cover a wide range of keywords. Many patents use non-obvious language, so try searching with as many keywords related to your invention as possible. Use all of them during your search, and because inventors occasionally use incorrect spellings, using a few wrong keywords during your search is not harmful; for example, you can use “receive” and “recieve” both. XLSCOUT came up with a unique approach to assist with keyword searches. A proprietary corpus of more than 3 billion technical concepts has been developed based on 100GB of pre-processed data. The corpus provides focused synonyms and interoperable words for a particular keyword or phrase.
It is also critical to understand the proper patent classification system. For example, different regions have different classification categories. For example, Europe (CPC, IPC, ECLA) and the United States (US classes or USPC Classes) share a system, whereas other countries have different methods for organizing patents. Your search will be more effective if you know which classes and subclasses your invention belongs to. Professional patent examiners will sometimes create their subclass classifications to organize the information they find. XLSCOUT Patent Search tool also provides an IPC/CPC Helper option for users to search in IPC/CPC Classifications as well. A simple keyword search can provide you with the relevant IPC/CPC Classifications.
The F/FI terms are a classification system used by the Japanese. There is a pool of classes available; all you have to do is find the best category pertaining to your field of invention.
Discovering What Exists?
“Prior art search” refers to information on innovations that have already been made public. A prior art search will give you an idea of what technology is available. This will enable you to make an informed decision about whether your invention is novel enough to justify patent protection.
If a product similar to your innovation has already been patented or described in a printed publication anywhere around the world, it may have an impact on your ability to obtain patent protection.
Prior art searches can be conducted on the following platforms:
The mere fact that a patent has been issued does not imply that it is valid. Relevant prior art may have been missed when the examiner searched the patent application, and if this prior art is discovered later, the patent may be invalidated.
You may be worried about infringing on another party’s patent. However, a prior art search may reveal that the patent is invalid.
How Long Does a Patentability Search Take?
It is entirely dependent on the platform you are using. If you use XLSCOUT’s AI-based tools (Novelty Checker), you can get results quickly and compare the information from your innovation with the data from the AI-driven tools.
- The results of a manual search in any paid or unpaid database will vary depending on the field you are researching and the type of citations you find. It is possible that you will come across a very relevant citation sooner rather than later, requiring less time to search, or that you will have to go through many hits to identify a good citation at times.
- Generally, novelty searches take less time than other types of searches. This is determined by the quality of your search strings and the set of keywords you are using, which is why it is preferable to go with companies that have experts in this field rather than searching on your own.
- Using a Novelty Search tool like Novelty Checker helps you conduct a first pass novelty search or prior art search in a few minutes. Its automated novelty search report gives you an indication of whether your idea is similar to the prior art or not.
- After searching, the data must be gathered in a proper representative manner so that the findings can be justified in relation to or against the inventor’s invention.
- Reports can be created in word, PowerPoint, or excel formats.
- XLSCOUT’s AI-based platforms provide automated patentability searches, automated landscape searches, automated prior art searches, automated novelty searches, and other related searches.
- Reports can also include data in graphical form, which not only beautifies the report but also better justifies the gathered data.
- A claim chart report can also be prepared, in which the invention is divided into pieces and prior art data is mapped in front of the pieces. It will provide a better understanding of the subject matter.
Patentability Search Report
A patentability search report also referred to as a state-of-the-art search report or broad landscape search report is an analysis of numerous citations such as patents and non-patents discovered during a search. Depending on the client’s needs and expectations, patentability is also known as prior art search, state-of-the-art search, or broad patent landscape search.
A patentability search uncovers references to similar contexts to the invention that must be patented. The references identified may cover one or more critical components of the invention to be patented or the innovation being searched for.
If an invention is novel, useful, and non-obvious, it is patentable. A patentability search assists an inventor in determining whether his invention is new and novel, or if it is already recognized or published in the art prior to the date of invention. The search also assists the inventor in determining whether his innovation is obvious to a person skilled in the art. This can be done with a single citation or a mixture of citations. A novelty search or prior art search is another term for a patentability search.
What is a Prior Art?
Prior art is any information that was disclosed prior to the date of the innovation and is known to the public.
Prior art can take any form, including patent publications and applications, non-patent publications and applications, research publications, white papers, journals, products, product manuals, periodicals, books, PDFs, user guides, and so on. Prior art can include anything from a public speech to breaking news.
In the patentability search, there is no cut-off date for prior art. It could be centuries old, or it could be brand new. Furthermore, the prior art could also have been published anywhere in the world at any time. There are no geographical or time constraints in the patentability search.
Furthermore, one year before filing the patent, if the inventor discloses any information pertaining to his invention in any form, the information is regarded as prior art.
Why Do We Need a Patentability Search?
The patentability search is used to determine whether or not an invention is patentable. If an invention is not novel, obvious, illegitimate, or useful to the world, it is unpatentable. To be patentable, an invention must be novel, useful, and non-obvious to a person skilled in the art.
Furthermore, the patentability search assists an inventor in determining whether he should proceed with drafting a patent to have legal rights over the innovation if it is novel, or whether the inventor should abandon the idea of protecting his innovation if it is already recognized in the art or is obvious to a person skilled in the art.
This is significant because obtaining, owning, and sustaining a patent is a costly process. As a result, the inventor must proceed to the subsequent steps if and only if he is confident that his invention is novel and will benefit the world.
A patentability search may also reveal that some aspects of the innovation are known in the art, while others are novel and not recognized in the prior art. As a result, the inventor may modify his or her objective or invention by concentrating on the novel part.
If performed on a larger scale, such as the state of the art, the patentability search may also provide the inventor with an idea of different technologies or inventions in the same domain as his invention. This would provide the inventor with a clear picture of what type of work is currently being performed and what they could do differently.
Furthermore, if performed on a large scale, such as a landscape search, the patentability search can provide the inventor with an idea of work done in the relevant area or technology.
It also displayed the main players active in the domain, their filing trends, major countries in which citations for that technology are filed, key areas that are underexplored, and so on.
Thus, if an assignee wants to know whether their invention is patentable or not, a patentability search that includes both patents and non-patents is performed. A technology landscape search may also be performed if the assignee wants to identify various technologies, players, patent trends, and so on in a specific technology.
Furthermore, because the USPTO follows the first-to-file rule, the filing date of a patent is very crucial in determining the future of a patent. That is, the inventor who files their patent first receives priority. As a result, time is of the utmost importance in this situation.
Performing a Patentability Search
An invention disclosure is sought to perform a patentability search. A set of key elements may be extracted from the invention disclosure and used to conduct a patent and non-patent search. As a result, a searcher comprehensively understands the innovation and extracts various key features that reflect the innovation.
Thomson Innovation, USPTO, XLSCOUT, Orbit, Espacenet, Google, ScienceDirect, IEEE explore, CNIPA, KIPO, JPLATPAT, and other paid and unpaid databases can be used to conduct a patentability search.
The search is carried out by extracting a set of keywords from the client’s disclosure and forming search strings based on the keywords using one or more keyword combinations. A searcher thoroughly examines the data set procured after running the search string.
In addition, the searcher can identify different IPC/USPC classifications relevant to the invention’s field. These classifications’ descriptive definitions can be obtained from the USPTO or Espacenet.
The search strings can be built using keywords, classifications, inventors, and assignees who are active in the domain. Furthermore, citations (both forward and backward) of relevant citations can be investigated.
Patentability Search Report/Patent Search Analysis Report
A patentability search report, a patent search report, a patent landscape search report, a prior-art search report, and other reports are prepared based on the analysis. The terminology used is determined by the scope of the analysis.
If the search analysis shows that the invention is not obvious or recognized in the prior art, the inventor may proceed with drafting a patent. However, if the search analysis uncovers prior art or citations similar to the invention, or if the obviousness of the invention is called into question, the inventor may be forced to change or amend his invention.
The patentability search report must assist the inventor in determining where they stand in the technology if their ideas are non-obvious, novel, patentable, or obvious, known in the prior art, and unpatentable.
Following the search, the identified citations are handpicked based on key features. The closest citations are thoroughly examined. The citation analysis gives a thorough understanding of the invention’s novelty. It shows which main attributes are disclosed in the prior art, which are novel and not common, and which are not disclosed at all in the prior art.
This allows the inventor to modify his invention and further draught the invention and its claims based on the search analysis. The searchers can also summarise each citation offered in the search report and prepare a statement based on what is disclosed in the invention and what is not disclosed in the invention. The searchers must have a thorough understanding of the domain, and their comments can assist the inventor in quickly reviewing the citations provided.
Furthermore, the searcher/analyst can form a patentability viewpoint that clearly explains which elements of the invention are not obvious and novel and thus should be focused on when developing the patent and claim limitations.
The search report includes all prior art relevant to the invention, such as non-patents, pending applications, granted, alive, dead, expired, or abandoned patents, and so on.
Factors to consider when estimating the cost of a patent search include:
- Scope of Search: Consider the possibility of missing vital information when deciding how much to spend on a patent search. Keep in mind that the purpose of a patent search is to decide whether it is worthwhile to file a patent application. What if you take the easy route and don’t find any relevant prior art, only to see your patent overturned years later due to a more thorough search revealing that your innovation was not patentable?
The more thorough your patent search, the better protected you will be.
- Search Logic: Every patent search employs natural language queries of relevant databases. For instance, Google searches. Advanced searches, in contrast, will use proximity searches, Boolean operators, and connectors to seek documents that don’t perfectly match the query phrases but still comprise useful information.
The most advanced, precise searches will include classifications and common assignees (applications and patents involving one or more inventors conducting the search). The more comprehensive the method, the more likely relevant prior art will be discovered.
- Search Location: Unfortunately, most patent searches are outsourced to foreign firms in India and other countries. This can undoubtedly affect the quality of the search, as English proficiency and vocabulary differ significantly between contractors. It is more costly to do a patent search in the United States. The lower the cost of a patent search, the more likely the work will be outsourced.
- Search Deliverable: “Search deliverable” means the final product you will receive from the individual or firm conducting the patent search. If you choose the low-cost option, you will receive a stack of papers, including copies of applications, patents, schematics, and anything else that the searcher considers to be relevant. It will be up to you to connect the dots in meaningful ways. That is, the less you pay, the more work you will have to do on your own, and vice versa.
A feature matrix with a few citations that indexes the detected material will most likely appear in the middle of the spectrum.
Art matrices, which indicate where necessary elements can be found in patent drawings and other papers, are among the most expensive searches.
The patentability opinion is the final deliverable of the search. Most lawyers agree on several analytical hours beforehand (usually at least one, but sometimes up to ten), and then they provide a patentability determination based on what was done during that time. A better search significantly reduces analysis time.
As a result, paying for a better search deliverable that smoothens the analysis is less expensive than the additional attorney time needed to evaluate a substandard search deliverable.
How does XLSCOUT’s Novelty Checker help?
XLSCOUT put the use of reinforcement learning to its AI-based Novelty Checker tool to get quality prior art search reports in just 10 minutes. The Novelty Checker uses reinforcement learning to filter the noise from the prior art by pulling up the relevant results on top of the list. To be precise, it assists in conducting a novelty search to help you ensure that your innovation is unique. By selecting a few relevant and non-relevant results, users can apply them to the result set. The system takes the user’s feedback and then learns from it. Then it re-ranks the results by bringing the quality results to the top and sending the noise to the bottom.
Without reinforcement learning, users go through hundreds of results manually. By applying this process, users can skip going through the non-relevant results. Reinforcement can also be applied multiple times to a result set according to users’ different requirements/criteria. Users can then view the Top-10 or Top-20 results for each criterion to perform a prior-art analysis for idea validation.
Users can quickly generate an automated novelty and patentability search report by selecting these Top-10 or 20 results. The Novelty Checker prior art search reports include a list of results along with relevant text mapping with the key features of the invention for enabling quick decision-making.