Prior Art Searches

Our prior art searches cover global patent and technical literature searching to determine the novelty of your invention and help you make better IP decisions. Our research specialists, with expertise across varied technology domains, focus on identifying search results that precisely meet the clients’ objectives. Drawing from our several years of experience in patent searching and analysis, we use highly efficient and coherent search methodologies that include:

  • Keyword based searching
  • Classification based searching (CPC, IPC, F-terms)
  • Assignee/Inventor based searching
  • Citation analysis
  • Non-patent literature searching

FAQs

Prior art is any evidence that your invention is already known. Prior art does not need to exist physically or be commercially available.

 

It is enough that someone, somewhere, sometime previously has described and made something that contains a use of technology that is very similar to your invention.

 

Prior art can be:
  • An existing product is the most obvious form of prior art.
  • Any publication
  • Any material available to the public
  • Making available and exhibitions of products
  • Non-disclosure agreements
  • Oral disclosures
The searching involves following steps:
  1. Review the Patent: Review the patent you are researching and gain a detailed understanding of the technology involved as well as any key features of the invention. You t view the patent’s application file on the USPTO’s Public Pair website to ensure you do not submit previously considered prior art
  2. Choose a database: There are various online databases (both paid and free) that you can use to search for prior art
  3. Maintain a Search Log: Keep a search log to record your previous search parameters and results
  4. Mapping the Claims: Once you have narrowed your search results compare each of the claims of the patent to the prior art reference.

Patentability/Novelty Search

Screen inventions at an early stage to reduce your prosecution costs

A quick novelty check, prior to drafting or filing a patent application, can determine the likelihood of getting a patent and in-turn save huge costs involved in maintaining patents.

We perform extensive searches to analyze the scope of an invention in light of the identified prior art references, which can help you determine whether a potential invention is novel and patentable.

Intellectual property, especially patents, is one of the most critical intangible assets of an organization– especially the ones that sustain majorly upon research and innovation. Given that a patent offers its assignee the unique rights towards the use of product/technology and blocks others from infringing upon their patent for a very long period of time, it is imperative that patents are not granted to every idea that is ever ideated.
Hence, patents are only granted to inventions that meet certain pre-defined criteria. 

For an invention to be patentable, it must be:

  • Novel

  • Non-obvious

  • Useful

A patentability search, also known as a novelty search, is conducted before filing a patent application to ensure the novelty/uniqueness of the invention. 

By performing a novelty search for prior art, the inventor, patent lawyer, or a patent examiner can figure whether someone else already has had the same idea or not, along with the details of the previous invention. If the search returns that someone has already worked on a similar idea, you can save money, time and effort by not filing the application OR alter/improve your idea such that it meets the criteria of patentability. 

Quick and low-cost searches  | 3-5 days turnaround time | PDF copies of each reference

FAQs

Patentability search gives you an insight about the chances of obtaining a patent on your idea .The purpose of a patentability search is to determine whether and which of the details of your invention are new. This search is also helpful in determining the scope of patent protection that you might be able to achieve. This brings you in a position to plan your business strategies accordingly on the parts of your invention which can be protected.

Patentability Search also:
  • Reduces risks: Covers the risk of losing money, time and effort spent on drafting and filing the patent application, in cases where the patent application is rejected by the examiner due to presence of a similar concept in another preciously awarded patent
  • Leads to better claims: It enables the patent drafter to emphasize on the advanced technology in a better way so that it clearly distinguishes the invented work from the prior art . it requires deep knowledge about the prior art., so that novel claims would be drafted in a more relevant and precise way.
  • Enhances prosecution speed: It enables the applicant to make the corrections and be careful in areas which are weak sections. It allows claims to be made in such a manner that it prevents the prior art before the examiner’s own search. This depends upon the time, budget and skills of the searcher.
  • Preserves right of utility: Doing your research and avoiding any changes to the patent application can help you preserve what’s known as the doctrine of equivalents, which is helpful in case of court procedures. This doctrine lets you keep competitors from using similar inventions
  • Satisfies the Duty of Disclosure: According to the U.S. Patent Office, each person filing a patent application has a “duty of candor and good faith,” which includes the “duty to disclose” all known information. Failing to do so can result in your patent being cancelled
  • Improves litigation strength: Items uncovered during your novelty search can be submitted to the patent office as references/citations along with your application. This makes it unlikely that your competitors will be able to use those uncovered references against you in challenging your patent
There are 3 major requirements for patentability: –
  1. Novelty-your idea or invention must be new and original, never seen or done before
  2. Inventive step and non-obviousness- Not an obvious combination of prior innovations or ideas.
  3. Industrial applicability- The innovation must be useful (credible and substantial)

The law does not require that you do a patentability search (also known as a patent novelty search) before filing a patent application, however a search becomes very helpful to in defining the right first step in the patent filing process.

The ideal time to conduct a Patentability Search is before preparing the patent application to determine whether the invention is novel and non-obvious.

This search is typically conducted when an inventor is interested in applying for a patent and wants to determine whether a similar or identical invention already exists. The main aspects that are targeted in a patent search is to provide opinions on Novelty/Uniqueness, Inventive Step and Industrial Applicability of the invention.
A Patentability Search is quite different from Non-Infringement search. Non-Infringement Searches are designed to address whether the commercialization of your idea would infringe any patent owned by some other person or organization. Patentability search does not serve the same purpose.

There are a number of patents and applications at the patent offices that have the disclosure of the products and services not yet on the market. So, a patentability search becomes important to know about these silent existing patents which can become a problem when you file your patent.

Many search providers do not provide the analysis of the search results but provide you only documents leaving the analysis on you on the basis of your results. Some firms provide detailed analysis along with the search results. It is recommended to consult a patent attorney for the analysis part.

Even if a patent search provides results that points to a favorable position for the client to proceed with a patent application, non-public prior art may still exist which could prevent you from obtaining a patent. So, the answer is a no. Most U.S. Patent applications are secret or not publicly available for 18 months after the date that the patent application is filed.

 

State of the Art Search

A mini-landscape to evaluate your ideas

Commonly referred to as a mini-landscape or an extension to patentability search, it helps to validate the potential of an idea giving you an overview of the existing art in a particular technology. The study helps to identify new avenues for research and development.

This comprehensive search provides a technical breakdown of the key patents in the technology of interest, along with the insights into the latest developments in a technology, key players and market trends.

These searches are broad but not as broad as a landscape study, which often touches lot of surface but in depth. In state of search, we sufficiently narrow the surface area to be covered and go in depth to answer some specific questions proposed by business, R&D or legal team regarding a particular technology 

FAQs

Main reasons behind getting a State of the Art Search done are:
  • To identify state-of-art of technology
  • To generate ideas for R&D
  • To reduce significantly R&D investment
  • To develop new technical solutions to problems
  • To evaluate specific technology
  • To update new technological trends

 

Patent Invalidation Search

Scrutinizing target claims and limitations to challenge patent validity

Focused on identifying prior art that can possibly question the novelty or non-obviousness of an invention, our teams actively analyze the target claims of a patent, to define search strategies for finding references that may be used alone or in combination, to invalidate the claims of patent.

Given that these are highly specialized searches, they are best left to experts like attorneys or patent search firms. In cases of a highly complex litigations or premium invalidity searches, our teams collaborate with the client to tailor searches as per requirements – defining a unique search strategy and providing interim reports and regular updates, ensuring we find the killer art.

Analysis of file wrapper or prosecution history | Detailed claim chart mapping, with expert comments |

5-10 business days turnaround time | Multiple budget options customized to suit your budget 

FAQs

Patent Invalidity Searh is done:
  • When a complaint of patent infringement is received from a patent owner
  • When a cease and desist notice is received from a patent owner
  • Prior to enforcing your own patents to regulate invalidity risks
  • To explore the strength of the patent prior to buying
  • When you want to oppose a recently issued patent of a competitor
You need a Patent Invalidity Search:
  • To invalidate patents in infringement cases
  • To prepare for patent enforcement
  • To identify targets for licensing
  • To draft an FTO opinion
A patent is declared invalid when:
  • Claimed subject matter is not novel
  • Claimed subject matter is obvious
  • Claimed subject matter is inadequately described
  • Claims are not enabled
  • Claims do not have the priority
  • Claims do not satisfy the eligibility criteria

Patents such as utility patent, design patent, utility patent, composition patent and even a Standard essential patent can be invalidated using prior art.

 

Freedom-to-Operate Search

Commercialize your ideas

When you are looking to sell or launch a new product in the market, clearance searches will help you identify any in-force third-party patents/applications that can pose a risk of potential infringement.

We work with you to understand and analyze the key features of your product, and accordingly design strategies to search and identify claims elements (of relevant references) that read onto the product features. Search scope can be limited to jurisdictions of interest. Expired patents existing in the public domain may be included upon request. Legal status is provided for tracking patent expirations, which can be used to design the timeline for market entry, thus, mitigating the risk of infringements.

“Are you selling/producing your product/invention without infringing on other people’s patents?” This is what freedom to operate search helps get the answer to.

Legal status of each relevant reference | Product to patent claim maps | 5-7 business days turnaround time | Customized and free of cost quotes

FAQs

Design Patent protects products shape, structure and pattern. A Design Patent is directed towards the visual appearance of the product and not function or technology of the invention.
An industrial design right does not protect the technical or functional features of a product. It only protects the appearance of the product. On the other hand, the functional or technical features of a product can be protected by a patent.
Yes.
  • Paid databases: You can use Orbit design and Derwent
  • Free databases: You can use WIPO- Design and Design View etc.

Design Protection guarantees you the exclusive right to use a design, which includes making, offering, putting on the market, importing, exporting or using the product in which your design is incorporated or to which it is applied.

Designs Registration covers external ornamental or aesthetic appearance such as patterns, color, lines, shape or surface of the article.

Under the provisions of Design Act, 2000, any manufactured object is known to be “article”. The object can be of any substance irrespective of artificial or natural. The article must be capable of being made and sold separately.