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Patentability Search- Advantages and Disadvantages

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Title: Patentability Search- Advantages and Disadvantages


1
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
2
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

2
TT Consultants Pvt. Ltd
3
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.

3
4
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.

4
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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.

5
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Quick Novelty Search
6
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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

7
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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.

8
9
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.

9
TT Consultants Pvt. Ltd
10
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

10
TT Consultants Pvt. Ltd
11
India US Taiwan
Corporate Headquarters Mohali, India Office
413-413 A, Tower A, 4th Floor, Bestech Business
Tower, Sector- 66, Mohali, Punjab 160055,
India Other Location Gurgaon (India) Unit number
252, 2nd floor ,Tower B2, Spaze I-Tech Park,
Sector 49, Sohna Road, Gurgaon
122002 1.347.284.6413 (Mobile) 91-9876667711
(Mobile) Email j.talwar_at_ttconsultants.com
Other Offices Tainan, Taiwan (Branch
Office) Room 410, Technology Transfer Business
Incubation Center, National Cheng Kung
University, No. 1 University Road, Tainan City
701 Hsinchu, Taiwan Si-Soft Research Center,
1A2, Lising 1st Road, Hsinchu City   Washington,
DC (Sales Marketing Office) 1701, Pennsylvania
Avenue, NW, Washington DC. 20006 1-
(202)-370-6471
TT Consultants Pvt. Ltd
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