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?
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.
To view the full article visit — 5 things a Patentability Search Report must contain
