2021-22 saw the highest number of Patents granted by the Indian Patent Office at 30073 patents granted. This marks an almost 130% increase in grants of patents since 2017-18, just five years ago. However, 35990 applications were disposed of by the Patent Office in the same time period.[1] Thus, it is important to highlight the importance of patent search which will ultimately provide insights before filing of a patent application and can significantly increase the chances of the grant of a Patent.
AN INTRODUCTION OF PATENT SEARCHES
Patent Searches are one of the most crucial processes in the granting of a patent. It serves an important function of understanding and increasing the chances of granting of a patent. However, often the importance of a well-conducted patent search is undervalued. Patent search refers to a thorough and exhaustive search of the patent database and other sources. This includes searching patent databases and publicly available data to find all prior art. This article explores the types of patent searches and their functions while delving deeper into the challenges faced while conducting Patent searches and the consequences they can have. Further, why it may be best to consult a professional for your patent search needs.
TYPES OF PATENT SEARCHES
There exist multiple types of patent searches each with diverse objectives and each serving a unique and distinctive purpose.
- Novelty Search[2]: This search aims to ascertain the novelty and non-obviousness of an invention by comparing it to all prior arts. It assists inventors in understanding if their concept is genuinely novel and eligible for patent protection. It is usually conducted before the filing of a patent application to determine if the patent can be granted and if not, to amend the claims considering the prior art.
- Invalidity Search: These searches serve the purpose of challenging the validity of an existing patent. By uncovering prior arts that were not considered during the examination by the patent office, these searches aim to prove the patent’s lack of novelty or obviousness. Competitors often use invalidity searches to enter or gain an advantage in a market by invalidating a competitor’s patent.
- Freedom-to-Operate (FTO) Search[3]: Organizations conduct FTO searches to ensure that their intended products or processes do not infringe upon existing patents. This type of search provides a clear path for innovation without risking legal disputes. The search is usually conducted when a company seeks to enter a new country to determine if it can operate in the country without any hindrances.
- Patent Landscape Analysis[4]: Patent Landscape Analysis provides a snapshot of the patent situation of a specific technology, either within a given country or region, or globally. This is a detailed and in-depth study of the published and granted patents focusing on a specific geographic region or industry to gain insights into the business and technological trends. These analyses identify trends, emerging technologies, and potential opportunities for innovation along with the understanding of the industry to make important policy decisions.
White Space Search: White Space is an area where there is quite little or no innovation. Little or no patenting activity has been done in that field or industry. This analysis is done as a prerequisite to identifying where innovation is possible and where there exists potential in the market.
THE IMPORTANCE OF PATENT SEARCHES
- Avoiding Duplication of Effort: Research is often a tedious and expensive task. A comprehensive patent search helps innovators steer clear of redundant work by uncovering prior art. This prevents valuable resources from being wasted on conducting of research that is already in the public domain.
- Mitigating Infringement Risks: Patent searches minimize the risk of unintentional infringement by identifying existing patents that deal with similar technologies. This safeguards innovators from legal disputes down the line and prevents any financial setbacks that it may bring.
- Assessing Patent Value: Patent searches allow inventors to gauge the novelty and uniqueness of their inventions allowing for estimation of the evaluation of the commercial potential of a patent. This insight aids in making informed decisions about pursuing patent protection
CHALLENGES OF CONDUCTING PATENT SEARCH
Patent Search is a complex process involving multiple steps and strategies, each with its challenges.
- Comprehensiveness: The sheer volume of patent databases and the continuous influx of new patents make it challenging to ensure a truly exhaustive search. Further, each database needs to be searched extensively and thoroughly to prevent missing any relevant prior art which can be detrimental to the patentability.
- Search Strategies and Techniques[5]: Search strategies play an important role in the proper search of prior art and patents. The search strategy involves determining relevant keywords that are both closely related as well as relevant and searching using the combination of these terms in order to conduct both broad and narrow searches to ensure no prior art is missed.[6]
- Complex Assignee Structures: Patents can be assigned to subsidiaries or entities with different names, making it difficult to identify the true owner of the patent. Further, mergers and acquisitions and changes in names pose an additional complication to finding the real owner of the patent. Knowing the true owner of a patent can often be critical to determine the way forward with an appropriate strategy.
- Data Quality[7]: Inaccuracies in patent data, such as misspelt names or other application details, can lead to incomplete or erroneous search results. Further, the difference in spelling of words depending on region further poses a challenge to the exhaustive nature of the search. Patents across different countries are filed in different languages. Translation of such patent poses inaccuracies and inconsistencies and a threat of missing key prior art.[8]
CONSEQUENCES OF INEFFECTIVE SEARCH
A Patent Search can be ineffective if the challenges of search are not dealt with, and can be detrimental to the intended purpose of the search. Dealing with these challenges requires professional experience, knowledge, and the correct search strategy. Conducting an ineffective patent search can have far-reaching repercussions:
- Legal Ramifications: Incomplete searches could result in additional objections to an application or even non-grant of a patent in addition to the accidental infringement of a patent, potentially leading to costly legal battles.
- Missed Opportunities: Failing to identify existing patents may lead to missing out on licensing agreements or collaborative opportunities with the patent holder or the undervaluing of threats of a competitor.
- Resource Drain: Basing research and development efforts on incomplete information can lead to wasted resources and time. Further, it may even lead to long delays or even stalled projects which further take a toll on the resources of an organization.
CONCLUSION
The importance of a patent search cannot be underestimated. This process significantly enhances understanding and the likelihood of successfully grant of patent. Neglecting its value can lead to missed opportunities, potential legal issues, and application rejections.
However, patent searches pose challenges such as complex databases and technical difficulties. Relying on professionals with expertise in this domain is recommended. Their experience minimizes errors and maximizes the potential for a well conducted search. Recognizing its significance and leveraging professional support empowers inventors and businesses to secure robust patents, ensuring a strong foundation for future endeavors in the realm of Intellectual Property.
[1] https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Final_Annual_Report_Eng_for_Net.pdf
[2] https://www.wipo.int/edocs/mdocs/africa/en/wipo_pat_hre_15/wipo_pat_hre_15_t_7.pdf
[3] https://www.wipo.int/wipo_magazine/en/2005/05/article_0006.html
[4] https://www.wipo.int/publications/en/series/index.jsp?id=137
[5] https://www.wipo.int/edocs/mdocs/africa/en/wipo_tiscs_znz_16/wipo_tiscs_znz_16_t_6.pdf
[6] https://www.wipo.int/edocs/pubdocs/en/wipo-pub-rn2021-1e-en-wipo-guide-to-using-patent-information.pdf
[7] https://www.wipo.int/export/sites/www/standards/en/pdf/03-01-01.pdf
[8] https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_34_1_guidelines-draftSearch-examination-04march2015.pdf
