Introduction
Very few innovators understand the value of a patent search, and even fewer know how to perform a proper patent search. For startups and other businesses where idea and intellectual property (IP) exploitation is the core, performing a thorough patent search prior to developing the IP becomes pivotal. The search helps answer the million-dollar question: are there existing ways of doing what I am trying to patent?
Performing a patentability search helps provide the existing body of knowledge pertaining to a particular field of endeavor and other cited literature that may have been previously published.
In the field of patent analysis, technology is advancing at an exponential rate, and prior art searches are no exception. With the incorporation of Artificial Intelligence (AI) into intellectual property (IP) search platforms, prior art searches are now easier and faster.
However, like all technologies, AI is a tool and cannot replace human judgment. For a judge to take a seat on the bench, a lawyer must have done in-depth analysis on the myriad of cases pertaining to the area of focus.
Prior art and patent searches are exploratory by nature and incorporate a multitude of factors. The ultimate goal is to find cases and literature that help answer the patentability question.
In India, the Patent Office examines all patent applications for consideration of novelty and inventive step. The Indian patent statute defines a “new invention” as an invention that is not known or claimed by any person, whether singly or in combination with another person, before the filing of the patent application and that is not public knowledge or is not readily accessible to the public.
Therefore, in the Patent Office of India, the search exercises may be directed to:
-Publications relating to patent applications or patents;
-Literature pertaining to patents or applications;
– Publications of scientific and technical nature;
-Conference publications;
-Manuals or catalogs of products;
-Other publications that are accessible to the public; and/or
-Other information that is available to the public.
The search is not to be directed to find references that “look similar” to the invention. The search is to assess the invention in relation to the state of the art.
Patents cover a broad range of human inventiveness. Whether it is to invent something that can assist humanity or to discover something that can pose a threat to humanity, patents protect all inventions. Patents serve an important purpose in society. AI has the potential to completely transform the field of patents and make the system much more efficient.
The present state of patent search systems and processes is such that identifying the most relevant and pertinent prior art to the subject invention may take an extensive amount of time. There may be many ways to search for prior art. The ways may include use of keywords, classification codes and/or other codes, and identification of patent citations.
AI may assist in patent searches and prior art identification in many ways. These may include identifying document synopses, cross-document conceptual similarities, related terminology and/or classification areas, and search expansion. AI may help prioritize patents and other documents in a large dataset.
Similar Results Groups Together Search Results
There are ways to organize search results in a way that helps group relevant results together. This can be useful in large result sets.
Clustering search results does not influence the analysis of patentability. The WIPO report did mention that relying on the results of some AI-based patent searches to arrive at a patentability conclusion is inappropriate.
Patent Novelty and Inventive Step Are Distinct
While dealing with patent procedures, it is critical to grasp the differences between various patent concepts. One of them is the difference between patent novelty and inventive step.
Patent Novelty
Broadly speaking, a patent is granted for a new invention. Novelty in the context of Indian patent law means that the subject matter of the invention is not known to the public in any form before the filing of the patent.
The question to be answered is,
Is the subject matter of the claimed invention anticipated in the prior art?
In order to analyze and answer the above question, it is necessary to analyze the inventive concept at a granular level and not to depend on prior art that may be broadly similar in function or purpose.
What is Inventive Step?
With regard to patentability, “inventive step” refers to whether a person skilled in the relevant field would be able to understand the technical idea behind a claim or whether he/she would be able to identify the specific previous disclosure from which that particular technical idea can be derived.
According to the Indian patent law, an invention must involve an idea or concept that is not obvious to a person skilled in the relevant field and that results in some improvement or advancement in a field of technology to be considered as an inventive step.
WIPO also takes a similar position on the concept of inventive step and states that an invention need not be an improvement over the existing technology to be considered as inventive.
WIPO also states that the assessment of whether an invention is obvious to a person skilled in the relevant art is highly contextual.
AI may assist in identifying the relevant documents.
However, in patent analysis, a number of other factors need to be taken into account.
Some of the factors that require the consideration of an expert are:
Which of the several elements of a claim need to be assessed for the purpose of patentability?
Does a particular document disclose the claim?
Are the elements of the claim, which are disclosed in multiple documents, similar to each other?
Do multiple documents collectively disclose the claim?
Does the claim fall under a statutory exclusion?
What is the best way to draft the claim?
Is the specification sufficient to support the claims?
The Indian Patent Office, in its guidelines, emphasizes that both the assessment of the novelty and inventive step of an invention should be based on an evaluation of the relevant prior art.
Thus, the assessment of both these criteria are significantly reliant on human judgment.
For Whom Is An AI-Assisted Patentability Search Useful?
AI-assisted searches can help:
– Teams working on new product or platform offerings
-First-time patent seekers
-Researchers wanting to commercialize their inventions
-Small and medium enterprises-
-New product development teams
-Large innovation-driven organizations
-Educational and research institutions
-Individuals and organizations interested in patent protection in India and other countries
Persons and organizations in Bangalore, India,, and other regions interested in patent protection should consider an early search to assess the patentability of their inventions before incurring expenses in preparing and filing patent applications.
What Is Required Before Conducting the Search?
Prior to conducting the search, it is helpful to provide a clear and comprehensive description of the inventions.
Other information that can be useful in defining the invention may include:
– The problems that the invention solutions
-Known solutions to the problems and their limitations
-New and novel features of the invention
-Diagrams or drawings
-Prototypes
-Results of experiments
-Names of the inventors
When does it become relevant to seek legal advice?
It is relevant to seek legal advice on patent protection once the invention has been publicly disclosed.
Step 1: Develop Search Terms
Brainstorm a variety of terms, including synonyms, different word choices, technical language, classifications, and different ways of describing something.
Step 2: Perform AI-assisted Searches
Use AI to find semantically related patent documents and articles.
Step 3: Use Patent Classifications to Search
You may find patent documents relevant to your search using classification. IP India states that classification, along with keywords and other search approaches, plays an important role in patent searching and searching in a synonymous or multiple ways
Step 4: Evaluate Relevant Documents
Experts must review and compare relevant documents to the proposed invention.
Step 5: Assess Novelty and Inventive Step
Depending on the search results, a patent attorney or agent may be engaged to analyze the proposed invention.
Step 6: Adjust Filing Strategies
Based on the results, the inventor may choose to combine other strategies.
Common Mistakes
Limiting Searches to Google
The Internet can be a resource, but patent and tech searching requires more.
Getting Legal Opinions from AI
AI can find relevant patent documents, but it doesn’t evaluate the patentability of an invention.
Using One Keyword
Patent documents use different terms to describe an idea.
Neglecting Classifications
Using classifications can produce relevant patent documents.
Disclosing the Invention
Public description of the invention may limit patent options. Innovators should consult a patent attorney before disclosure.
Consideration of Novelty and Inventive Step
If an invention is different from what is previously disclosed, this doesn’t necessarily mean that an invention step issue arises. Both novelty and inventive step should be assessed independently.
What We Do
Our IP attorneys, engineers and scientists, with the aid of artificial intelligence (AI), perform legal and technical analysis to assist innovators in:
-Structure and execute prior art searches
-Interpret patent documents to understand novelty and/or inventive step
-Write and/or amend patent applications
-Determine risks and opportunities before patent applications are filed
-Develop and implement an IP strategy (India and internationally)
-Help maintain the confidentiality of innovations
-Incorporate IP protections and strategies in overall business strategies of an enterprise
Our objective is not to provide our clients with the largest number of prior art documents. Our goal is to provide actionable information and advice to our clients based upon the searches that we conduct.
Our Services
-We provide a range of IP services to businesses and individual innovators, including
-Patentability and freedom to operate searches and opinions
-Drafting and filing of patent applications
-Preparation for patent office interviews and hearings
-Defense of patent office actions
-Preparation of patent infringement and validity opinions
-Trademark and copyright protections and registrations
Our purpose is to provide our clients in Bangalore and throughout India with cutting edge IP services that are integrates protection of our clients’ interests with strategic intelligence.
Frequently Asked Questions
1. What is a patentability search in India?
A patentability search is a structured review of relevant prior art to help assess whether an invention may satisfy patentability requirements such as novelty and inventive step. It does not guarantee that a patent application will be granted.
2. Can AI perform a complete prior-art search?
AI can assist with searching, semantic similarity, terminology discovery, and document prioritization. However, AI results may not be exhaustive, and professional review is important for interpreting the relevance of individual references.
3. What is the difference between novelty and inventive step?
Novelty broadly asks whether the claimed invention has already been disclosed in relevant prior art. Inventive step considers whether the claimed invention would have been obvious to a person skilled in the relevant field. Indian patent law treats these as distinct patentability considerations.
4. Should I conduct a patentability search before filing?
A pre-filing search can help identify potentially relevant prior art and inform drafting and filing strategy. The appropriate depth of search depends on the invention, technology, filing objectives, and relevant jurisdictions.
5. Can MakeMyPatent help with patent searches and filing?
MakeMyPatent provides patent-related services including patentability search, patent drafting, patent filing, objection responses, hearing support, and international patent filing strategy. Innovators can seek professional guidance based on their specific invention and filing objectives.
Book a Patent & IP Strategy Consultation with MakeMyPatent
Ready to protect your innovation? Book Free Consultation with MakeMyPatent for expert patent filing, patent drafting, patentability search, and IP protection support.
You can also request a Free Patent Strategy Session, Explore Our Services, or WhatsApp us to discuss your invention and filing objectives.
- Website: https://makemypatents.com/
- Call Us: +91 7829915191
- Email Us: info@makemypatent.com
Disclaimer: This blog provides general educational information only and does not serve as formal legal counsel. Please address your specific invention or IP requirements directly with a registered patent professional.