Patent Searches and their importance by Intepat


									Patent Searches and their importance:
In the grant of a patent, a lot of time, sweat and money are involved. The arena of patents is
developing at a fast pace. In 2009-2010, around 40,000 patent applications were filed against
the 17,500 applications filed in 2004-2005 in India, a leap of 250% in the past five years.
However, one should understand that not all patent applications filed are prosecuted
successfully. The primary reasons for rejection of an application are either (a) the invention is
not novel (b) or it is obvious such that a similar patent already exists.

The Government fees for a patent filing can be anywhere from Rs.14,000 - Rs.20,000. Besides
the Government fees, fees to the attorney or agent needs to be considered. On the whole, it is
without doubt that patenting is an expensive process and therefore, requires an
inventor/assignee to tread carefully in order to successfully prosecute patent applications.

A patent search or a patentability search is a search conducted in patent databases as well as in
the literature available to check whether any invention similar to your invention already exists.
In other words, it evaluates your chances of getting a patent grant. Therefore, instead of going
forth with the filing, if one conducts the patentability search, one can get a clear idea about the
patentability of the invention; whether the application should be filed and the strengths and
weakness of his invention.

Since patenting is an expensive procedure, it is prudent to conduct a patentability search before
filing an application. Besides financial reasons, there are several other compelling reasons for
conducting a search before filing an application.

   •   A patent search would make one realize the patentability or the extent of patentability of
       an invention. Many a times, inventors are not well-versed with the scope of patentability
       that law covers. For example, computer programmes, per se, is non-patentable but
       computer programmes that are manifested in a useful way can be patented. A
       patentability assessment can help you understand whether your invention is patentable
       and        if       so,      how        far       can        it      be        protected.

   •   It is important that your patent agent/attorney knows the prior art available in order to
       draft the patent claims. A patentability search gives an idea of what can be sought patent
       protection and what falls in the prior art domain. Thus, one can understand from the
       search report the area of strength of the invention and accordingly draft claims that do
       not      infringe     other      patents      or     fall     in    the      prior     art.

   •   Sometimes, the invention might not be novel and the patentability search might reveal
       patents/ inventions similar to the invention. In such cases, from reading the prior art
       literature, one can come up with newer ideas and refine the invention such as to make it

    TeleFax No: 91-80-42173649, Email: Web:
   •   By knowing the literature present in the field of one’s invention, one can understand the
       strength or weakness of the present invention. This, in turn, helps in drafting a stronger
       patent application and making it less vulnerable to rejections by the Patent Office. On
       the other hand, it would also help to decide whether one should proceed with the filing
       of the application or forsake it.

   •   The patent search can also reveal certain companies who are keen on obtaining patents
       in the field of technology relating to your invention. In such cases, it gives you the lead
       on which companies to contact for licensing of your invention.

   •   Many-a-times, we see existing patents already available in the database, yet they have
       not been commercialized. Analyzing the patent search may reveal why
       commercialization was not viable, thereby, helping you decide whether you should
       proceed with filing the patent application if commercialization is on your mind.

   •   One should note that while applying for a patent, the applicant needs to describe his
       entire invention. Even if his patent gets rejected, his application would be considered
       prior art, open for all to see. This can very often lead to a scenario where his
       competitors get access to his hard work. To avoid such a situation, a patent assessment
       would prove helpful. Even if in the eyes of the patent law, your invention is not
       patentable, yet you can use it as a trade secret and license it to others and gain revenue.
       A patentability assessment would help the investors realize whether applying for patent
       would justify the expenses borne.

It is a well-known fact that free patent databases are available over the Internet and anyone can
access these databases. However, it is pertinent that a person skilled in conducting searches be
given the task. The reason being, patent searches involves tedious, repeated searching through
various patent and non-patent literature. An unskilled person would not be able to do justice to
the vast amount of literature to be searched. Furthermore, a skilled person understands the
importance of the claims of a patent. The claims of a patent are of utmost importance when a
similar patent to your invention exists; in such a case, one needs to analyze the patent claims to
determine the degree of similarity between the two. Furthermore, a skilled person would be
able to counsel on the strength of your patent or on refining your patent so that it does not
infringe other existing art. A non-skilled person may not understand these concepts.

Professionals at Intepat understand the realms of patent searches and conduct comprehensive
searches in patent and non-patent literature and also provide counseling on management of

Please feel free to contact us at, in case any queries.

Copyright © Intepat IP Services Pvt Ltd

    TeleFax No: 91-80-42173649, Email: Web:

To top