Intellectual Property / Patent / Conducting Patentability (Prior Art) Search

Conducting Patentability (Prior Art) Search

A patent is an exclusive right granted to an inventor for an invention that protects the inventor against any unauthorized use of such a patent, the patent is mostly granted for a period of 20 years and the patent holder can take legal action against any unauthorized use of such patent.The patent holder has the right to grant an exclusive or non-exclusive license to use the patent to anyone for a specific period, the patent holder shall receive consideration for the license. The licensee’s rights to use the patent shall be limited and the licensee shall pay a royalty to the patent holder out of the profit made by use of such patent.

Therefore, we can say a patent is the granting of protection to an invention, which is a means of doing something new or providing a new technical solution to a problem. However, there are some inventions that might not get patents such as discoveries, mathematical methods, commercial methods, plants and animal varieties, scientific theories, etc. Also, methods, surgeries, and treatments that are done on humans and animals do not get patented in some nations.

A patent search/patentability search is conducted to make sure that no prior art invention and/or prior art disclosure exist resembling your product invention and/or process invention. Moreover, the patentability search is conducted by a patent expert to estimate the scope of patent protection in terms of patent claims the respective Patent Office will grant to you for your invention. Hence, it is always advisable to first conduct a patentability search to ascertain that there are no prior art inventions that are closely similar to your invention.

Types of Prior Art Search

Prior art searches take four forms: novelty, validity, clearance and landscape searches.

  • A novelty search helps an inventor to determine if the invention is novel before the inventor commits the resources necessary to obtain a patent and is done before an inventor files a patent application.
  • A validity search is done after patent issues, the purpose of which is to find prior art that the patent office overlooked. These can be useful for competitors looking to contest the validity of a granted patent.
  • A clearance search is a search of issued patents to see if a given product or process violates someone else’s existing or pending patent(s).
  • A landscape search provides a high-level view of the technology space and is normally performed to understand the lay of the land when entering a new technological area, including recent trends in technology, competitors, filing activity, and white-space/adjacent technologies.

 Documents required for patent filing:

  • Application form in duplicate
  • The provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months.
  • Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate.
  • Priority document convention application, when directed by the Controller.
  • Declaration of inventor-ship where the provisional specification is followed by complete specification or in case of convention/PCT national phase application.
  • Power of attorney (if filed through Patent Agent).
  • Fees

 Advantages of Patentability(Prior art)search:

  • Avoid submitting patent applications with claims that are not patentable and will be easily rejected.
  • Determine whether your invention is novel compared to the public prior art.
  • Develop a strong patent claim strategy before you file your patent application (and reduce the chance of extensive amendments)
  • Account for close prior art when drafting your patent application.
  • Understand how your idea fits into the technological field.
  • Be better prepared to discuss your invention with a patent attorney and explain what aspects of your work might be patentable.
  • Scope of the patent application to be drafted by a patent attorney.
  • Scope of patent protection that may be granted in terms of claims.
  • Patent search results assist the patent attorney in writing your patent application.
  • Distinguishing prior art results from your invention while drafting the patent specification, thereby improving the probability of obtaining patent protection

Process for Prior Art Search:

Step 1: Identifying Key Concepts to Formulate Search Strategy

Step 2: Formulating Search Queries

Step 3: Beginning the Prior Art Analysis

Step 4: Presenting the Prior Art Analysis

When Does Prior Art Not Count?

There are exceptions to prior art in which it may not count against filing a patent application. Certain experimental public uses might not count as demonstration or revelation. If an invention was secret and remained secret up until being abandoned by the original inventor, it may not apply as prior art. Trade secrets are not usually prior art, provided that employees and others with access to the information are under a non-disclosure obligation. Prior art generally does not include unpublished work or limited conversations.

Service Inclusions

Professional Fees

Service Exclusions

GST, Government Fee, and other Additional Taxes

Process followed by White Code Legal:

  1. The Client has to register themselves on our website.
  2. Once the Client is registered, we raise a Service Request.
  3. The Client receives a proforma invoice with an option to confirm and pay now or pay later.
  4. Once the Client confirms, our dedicated relationship manager liaisons with our experts and clients share a list of client information required to deliver the service.
  5. Once we receive the information, we take the required steps to deliver the service and the service request is closed.

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