Patentability Search

Introduction

Patentability searches are conducted to confirm the patentable nature of the invention before applying for patent protection. For a patent grant, an invention has to fulfil the three criteria of Novelty, Non-obviousness and Capability of industrial application. We carryout extensive patentability search analysis to help determine whether the newly conceived invention is patentable over the existing prior art.
patentability search involves searching of prior art, which includes all the published patent applications, issued patents, and all other non patent literature.

Depending on the market requirement, we provide customized options for patentability search to our clients:

1. Knock Out Search

Knock-out search is a quick 8-12 hours search to establish novelty of an invention disclosure. Our patent experts are skilled in carrying out highly directed patent and non-patent literature search to confirm novelty of inventive idea disclosed in the invention disclosure.

For comprehensibility, as a part of final deliverable, we share highlighted PDF copies of identified references along with searcher’s comment on each highlighted section

2. Patentability Search

A prolonged search conducted on invention disclosure to check novelty and inventiveness in view of identified prior art references. Our domain experts spend 28-40 hours on the subject matter to come up with overlapping prior art references and closely related prior art references that might obstruct grant of patent on the invention disclosure.

Final search report contain feature wise analysis of identified prior art references along with list of major search strategies / keywords/ class codes used for the search. The detailed feature wise analysis helps in understanding scope of protection and thus results in strong claim set.

For ease of understanding the relevancy of identified prior art references, references are categorized as X and Y category references, wherein category X denotes prior art references that disclose novel features of the invention in a single prior art reference and help in evaluation of novelty of invention. On the other hand, category Y contains all such prior art references that disclose one or more novel features of the invention and help in evaluating inventive step/non-obviousness of the invention.

[Sample report]

3. Invention Analysis

A service mainly aimed to assist startups, first time inventors, small business organization wherein they can assess patentability of their subject matter as well as evaluate their invention from commercial standpoint. For an inventor, founder, SME who is seeking investments upon speculative lines, it becomes important for them to know the market value of their technology as well as chances of acceptance of their proposed solution by the industry. A detailed analysis of invention to understand commercial and market aspect of the technology under question helps in preparing roadmap for future R&D activities. For comprehensibility, an Invention Analysis report is divided into five different sections:

Section I. Patentability Search – to establish novelty and inventiveness in subject matter. A detailed feature wise analysis of identified prior art references along with list of major search strategies / keywords/ class codes used for the search. The detailed feature wise analysis helps in understanding scope of protection and thus results in a strong claim set.

Section II. State of art analysis – to understand similar inventions that are related to the proposed invention. Knowledge of similar patents in the technology space helps in designing scope of invention and roadmap for future of their R&D activities. Graphical insights pertaining to active players in the domain along with key inventors and their approach/ thought process helps an organization position itself in the market space and understand the whitespaces in the technology space.

Section III. Competition Assessment – to understand the approach adopted by other competitor’s and effectiveness of the parallel approach, we list down competitor’s solution to the problem discussed in proposed invention. This primarily helps organizations to re-evaluate their invention in view of available parallel technological solutions and develop a foolproof system overcoming limitation of available parallel solutions.

Section IV. Commercial Assessment IIPRD, in this commercial evaluation section, offers an extensive global coverage and a broad technological range for your patent commerciality determination needs. We deliver an unbiased evaluation of your concept and intellectual property status. We work with your R&D/Legal team to determine your concept’s patent strategy and market strength. IIPRD, conducts a comprehensive commercial evaluation of the concerned patent from a i) Patentability/Freedom to Operate (if not a patentable subject matter) perspective and ii) Commercialization Potential perspective followed by a detailed report showing potential Licensees, SWOT analysis of the technology, main competitive products and comprehensive comparison therewith, product/IP level comparison, industry behavior to in-licensing/buy of IP’s, among other commercial aspects that can help the Patentee to understand the underlying potential of the technology.

Section V. Market Assessment IIPRD, through its team of MBA’s, Accountants and Technical Subject Matter Experts (TSME’s), provide a unique combination of research analysts who provide comprehensive market and revenue analysis reports on companies/ products pertaining to technology disclosed in the invention disclosure.

Our reports help Clients in identifying key competitors, emerging players/products, markets covered by a particular technology, etc. Revenue analysis reports provide a complete detailed analysis of a company’s performance and assists clients in estimating licensing revenue, royalty and more.

[Sample report]

Our Approach

At IIPRD, we keep ourselves updated on the recent changes in the patent laws of different countries, which are establishing a clearer scope of ‘Novelty’ and ‘Non-obviousness’, and base our Search Strategies to reflect such changes. We assist our clients by conducting a thorough patentability search on various patent and non patent databases and prepare a patentability search report citing all relevant prior art references followed by providing opinion on the patentability of the subject matter.