Why do We Need a Patentability Search and How to Conduct One?

Why do We Need a Patentability Search?

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. 

How to Perform a Patentability Search? 

There are several ways to perform a patentability search, depending on the database. One method can be using an automated patentability search tool like XLSCOUT’s Novelty Checker in which either the innovation disclosure or the drafted claim features are entered, and an AI-based patentability 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, which comprise the solution to your invention, serve as competing 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 complete, 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. 

There are millions of patents in the world. To uncover all of the information, you must conduct a thorough novelty search. To find the most relevant information, you should: 

Use a Variety of Search Platforms: 

• Free Patents Online 
• USPTO database 
• INPASS 
• 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.

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.