Patentability Search- Advantages and Disadvantages

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Novelty/Patentability Search
Topics

• Conditions for patentability
• What is patentability
• Importance of a patentability search
• State of the art search

• How to do a quick search?
• Search databases
• Provisional Non-provisional applications

TT Consultants
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Patentability Tests / Criteria

• The Supreme Court has said that patents cover
  anything under the sun that is made by man.
• Must fall within five Statutory Classes
• Processes
• Machines
• Manufactured items (objects made by humans or
  machines)
• Compositions of matter, and
• New uses of any of the above
• Conditions for Patentability
• Novelty (i.e. new) - Invention not known to
  public, prior to claim by inventor
• Non-Obviousness (i.e. inventive step) - Invention
  would not be obvious to a person with ordinary
  skill in the art
• Usefulness (i.e. industrial applicability) -
  Invention can be made or used in any useful,
  practical activity as distinct from purely
  intellectual or aesthetic one

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TT Consultants Pvt. Ltd
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What is a Patentability Search?
Patentability search or Novelty search is
probably the most common type of patent search.
The search attempts to determine whether a
specific invention is within the scope of the
patentable subject matter. Patentability search
can be performed much earlier during the
development of an invention, it is more commonly
performed prior to submitting a patent
application to check the feasibility of the
invention.

• Purpose
• The purpose of this type of search is to
  determine whether there are any previous patents
  (prior art) that might prevent the inventor from
  patenting his or her idea
• Another benefit is that the inventor can be
  spared the expense of filing a patent
  application, since the filing fee is not
  refunded, if the application is rejected.

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Why conduct a Patentability Search?

• Large investments are made in RD initiatives
• Huge costs are involved in filing and maintaining
  patents
• At each step of your research a number of
  ideas/inventions may seem patentable. It becomes
  imperative to decide what inventions should be
  protected and what should be modified or
  discarded.
• Patentability searches help identify novelty of
  your invention and existence of any relevant
  prior art, which can help orient the future RD
  strategy and decision making.
• Building up a strong patent portfolio is
  necessary not only to avoid future litigations,
  but also assert the patent in case of an
  infringement
• As opposed to the conventional idea of being an
  extra expense on the company, novelty searches
  are always a good return of investment (ROI) in
  the long run.

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Patentability and State of the art Search

• Patentability Search
• Conducted upon receiving a brief invention
  disclosure or exemplary claim. All disclosures
  and drawings/figures are reviewed prior to
  search.
• Involves a global search for patents (both
  unexpired and expired), patent applications, and
  technical literature (non-patent literature),
  over and above what an examiner searches to
  improve the quality of the application.
• A patentability opinion (provided by a patent
  attorney/agent) is necessary, prior to drafting a
  complete patent specification.

• State of the Art Search
• Conducted upon receiving a new idea or business
  method (that has still not been developed), a
  general product description or a technology of
  interest that you might want to explore.
• All issued patents are analyzed, expired or not.
  Because a product may have more than one
  invention associated with it, this search is
  usually more comprehensive and may result in a
  large no. of citations related to the new idea.
• Scope of the search is much broad and the
  analysis is less strict than if the search were
  for your use in determining patentability or
  infringement.

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Quick Novelty Search
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Patent and Non-Patent Databases

• Paid Databases
• XLPAT
• Questel Orbit
• Thomson Innovation
• Patbase
• Free databases
• Google Patents
• Espacenet
• USPTO (United States Patent and Trademark Office)
  allows the public to freely search on their
  website, USPTO.gov
• Other national offices databases.
• Country Specific Databases
• Japan- PAJ
• Germany DPMA register
• Singapore- IPOS
• Korea- KIPRIS, etc.

• Non-patent search databases
• IEEE Xplore
• ASME
• ACM
• NCBI
• PubMed
• ScienceDirect
• Google Scholar
• IP.com
• Semi wiki
• EDN
• EETAsia
• Elsevier

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Provisional and Non-Provisional Application

• Non-Provisional Application
• Establishes an invention's filing date (unless it
  claims the benefit of an earlier filed
  application, such as a Provisional Application).
• Filing a Non-Provisional Application starts the
  official examination process to determine if the
  invention is patentable.
• Non-provisional applications are confidential
  documents not available to the public unless and
  until published and/or issued as a patent.
• Non-Provisional Applications are subjected to
  official examination

• Provisional Application
• A simple and inexpensive way to begin protecting
  your invention. Gives you extra time to decide
  whether to pursue the full patent application or
  not.
• Provisional Applications are confidential
  documents not available to the public (unless and
  until a subsequent non-provisional is publicly
  available)
• Moreover, Provisional Applications will not be
  subjected to examination by patent office.

• Further, because a provisional patent application
  (PPA) is not made public unless its application
  number is noted in a later-published application
  or patent, the failure by an applicant to file a
  non-provisional application based on his/her PPA
  will not lead to public disclosure of his/her
  invention.

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About TT Consultants (TTC)

• TT Consultants (an ISO-27001 and ISO-90012008
  certified company) is a leading global patent
  search and analytics firm. We assist client
  across 30 different countries with all kinds of
  patent prior art searches including
  patentability, state of the art,
  validity/invalidity, freedom to operate,
  infringement, technology landscapes, patent watch
  etc. and patent drafting and filing support.
• Global presence through offices in three
  different locations i.e. US, India and Taiwan
• A team of 120 IP professionals - USPTO
  Examiners, Patent Agents, and Engineers and
  native search teams for Chinese, Japanese, Korean
  and Taiwanese patent searches.
• Rated as the Top Company in Patent Searches in
  India in an evaluation conducted by a sub group
  of Japan External Trade Organization (JETRO). The
  report published in May 2015 was based upon an
  open evaluation of about 30 companies wherein
  they were given a few searches to run.

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TT Consultants Pvt. Ltd
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Patentability / Novelty Searches at TTC

• Extensively used by top universities/research
  institutes in Asia
• Quick turnaround time of 3-4 business days, which
  can be further expedited
• Subscription to leading Patent Non-Patent
  databases. Database coverage of more than 120
  countries across the globe, including in-house
  patent and non-patent search database
• Competitive cost options (30 per hour)
• Innovative search reports that come along with a
  key feature analysis chart and many value
  additions offered by none other in the industry
• Automated patentability search tool on XLPAT
• To know more about TT Consultants and our
  services, please visit www.ttconsultants.com or
  send us an email at n.mahajan_at_ttconsultants.com

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TT Consultants Pvt. Ltd
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India US Taiwan
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(Mobile) Email j.talwar_at_ttconsultants.com
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Avenue, NW, Washington DC. 20006 1-
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TT Consultants Pvt. Ltd