Patentability Search- Importance and How to Do Patentability Search
TT Consultants 1
Applying Intelligence to IP – Globally
•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
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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 :
• 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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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.
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 R&D 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 R&D 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
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
Understanding the claimed invention
Keyword based open search or NPL searching (general searching/literature referencing
on Google) – look out for articles, research papers, videos, etc.
Keyword based search on free patent databases like Google Patents, Espacenet or
country specific databases (KIPROS, SIPO, PAJ) etc.
Technology classification based search (IPC, CPC, US, ECLA, etc) on patent databases
Combinational search (keyword and classification combined)
Assignee/inventor based search
Citation analysis (analysis of forward and backward references of relevant patents)
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Patent and Non-Patent Databases
• Questel Orbit
• Thomson Innovation
• Google Patents
• 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
• Google Scholar
• Semi wiki
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Provisional and Non-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
Moreover, Provisional Applications will not be
subjected to examination by patent office.
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
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-9001:2008 certified company) is a leading global patent search and analtytics
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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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
TT Consultants 11TT Consultants Pvt. Ltd
Applying Intelligence to IP – Globally
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