Patentability Search
Assessing Novelty and Inventive Step Before Patent Filing
Patentability search, also referred to as a pre-filing or novelty search, is conducted to assess whether an invention satisfies the statutory requirements for patent protection, namely, novelty and inventive step (non-obviousness), in view of existing prior art. The search is typically undertaken before drafting and filing a patent application and serves as a critical input for claim formulation, prosecution planning, and risk assessment.
An invention is patentable only if it is new, involves an inventive step that would not have been obvious to a person skilled in the art, and is capable of industrial application. A patentability search involves a systematic review of prior art drawn from patent publications, pending applications, and relevant non-patent literature, including technical journals, conference proceedings, technical standards issued by recognized standards-setting bodies, and other publicly available sources, to identify disclosures that may affect patentability.
Purpose of Patentability Search
A well-conducted patentability search enables clients to:
- evaluate whether the invention is novel and involves an inventive step under applicable patent laws;
- understand existing technical disclosures and closely related solutions in the relevant field;
- define and refine the scope of claims and specifications in view of identified prior art, with a view to strengthening patentability;
- identify situations where existing disclosures may materially limit the scope or strength of protection that can realistically be pursued; and
- inform R&D direction and filing strategy based on observed developments and filing activity within the relevant technical domain.
By identifying relevant prior art at an early stage, organisations and inventors are better positioned to make informed, defensible decisions regarding whether to proceed with filing, how to structure claim scope, and how to plan prosecution strategy, while managing legal and development costs in a predictable manner.
Scope of Patentability Search Support
IIPRD’s patentability search support is structured to provide a clear, legally relevant assessment of an invention in view of existing public disclosures, with the depth and breadth calibrated to the client’s filing objectives. The scope of work may include:
- identification of relevant patent and non-patent prior art across global public sources;
- searches covering major patent offices and international databases to capture jurisdictional breadth;
- feature-wise analysis mapping identified disclosures against the technical elements of the invention;
- documentation of search parameters, including keywords, classification codes, and database coverage; and
- preparation of an opinion on patentability, outlining the potential impact of the identified prior art on novelty and inventive step.
Where appropriate, an initial knock-out search may be conducted to provide an early, focused indication of patentability constraints before proceeding with a more detailed analysis.
Approach to Patentability Search and Review
Patentability searches are conducted through a structured, multi-step process designed to ensure both, technical accuracy and legal relevance:
- Technical Scope: The invention disclosure is reviewed to identify the core inventive features, underlying technologies, and intended applications, forming the basis for defining appropriate search parameters.
- Search Strategy Development: Search strategies are developed using a combination of keyword-based queries, patent classification systems, citation analysis, semantic tools, and jurisdiction-specific databases to ensure broad and balanced coverage.
- Comprehensive Searching: Searches are carried out across patent databases and relevant non-patent literature, including domain-specific technical sources, where appropriate.
- Manual Review and Analysis: Search results are manually reviewed by technically qualified analysts to filter irrelevant material and identify disclosures of legal and technical significance.
- Reporting: Findings are consolidated into a structured report containing reference listings, feature-wise observations, and concise summaries relevant to patentability assessment and drafting strategy.
Use of Technology and AI-Assisted Review
- To address the growing complexity of modern technologies, IIPRD integrates AI-assisted indexing and semantic analysis alongside structured keyword, classification, and citation-based searches. This approach enhances recall of conceptually relevant prior art that may be described using varied terminology across jurisdictions and technical domains.
- AI-assisted tools are used to improve the coverage and efficiency of the search; however, all results are reviewed and interpreted by experienced patent analysts and attorneys to ensure contextual legal relevance and accuracy.
Search Findings and Analysis
Depending on the scope and objectives of the engagement, the patentability search may include:
- identification of relevant patent and non-patent prior art with complete publication details;
- feature-wise mapping of identified references against the disclosed inventive aspects;
- analytical observations relating to novelty and inventive step considerations;
- documentation of search strategies, including keywords, classification codes, and databases consulted; and
- where specifically requested, an opinion on patentability with observations relevant to claim and specification drafting.
Use of Patentability Search Results
Patentability search findings are intended to inform filing and prosecution strategy by assessing novelty and inventive step in view of prior art, and do not constitute an assessment of infringement or freedom to operate, which require separate, claim-based analysis.
Illustrative Case Study
A global biotechnology company engaged IIPRD to assess the patentability of a novel gene-editing platform prior to finalising its filing strategy. IIPRD conducted a comprehensive search across international patent databases and relevant non-patent literature, identifying disclosures with partially overlapping technical features. A feature-wise analysis highlighted both potential novelty risks and opportunities to refine the scope of the claim. The resulting assessment enabled the client to strengthen its drafting strategy, anticipate likely examination issues, and align further R&D efforts with emerging developments in the field.
