Patent can be defined as a right granted to the owner of an invention that prevents others from making, using, importing or selling the invention without his permission. Such a privilege is granted as a reward for giving a technical solution to a problem. Grant of a patent involves a huge task for the inventor hence it becomes highly essential to have an analysis of prior art and inventions of the ideas which bear a close resemblance to the invention disclosure.
Patent search is the first step taken for a proposed invention before making it ready for filing. It is highly essential for the inventor to be aware of any prior art involved for the proposed invention so that enough space and opportunity can be provided for the inventor to know whether the proposed invention could be filed and also helps in determining the appropriate claim scope while drafting them.
It is the invention disclosure which decides the category of the patent search it needs to fit in. Generally the patent searches can be classified as:
1. Novelty Searches: also referred to as patentability search forms the most common and first line of search strategy. The preliminary objective of this search being flushing out the inventions with relevant prior art. This search does not have any date restrictions and any art which is in public domain during any period of time is considered as a relevant case study. A broader search would involve referral to the databases of other countries and other sources. Novelty/ patentability searches are often defined as the first line of defence search too.
2. Patent Validity Search or Patent Invalidity Search: This search has almost a similar concept to that of novelty search but is exhaustive and the purpose of the search is either to validate the enforceability of a patent’s claims or to invalidate one or more claims of a patent, respectively. The validity search is conducted after the grant of patent to check whether the claims are valid and if not how they can be invalidated. Prior to licensing also validity search is conducted to check whether the licensor has a legitimate claim over the invention. Commercially too the validity of the claims of the invention leads to increase in the licensing fee of the technology.
3. State of Art Searches: This kind of search is specific to have hands on information regarding the latest developments in a scientific or technical field. The best solution to a technical problem vests in a relevant patent and how was it fixed. Another similar search is a collection search but it has a more historical inclination.
4. Freedom to operate search: Also referred to as product clearance search is a broad and more complicated one as it involves scrutinizing each and every claim of the valid patents in search. FTO ensures that certain actions like testing or commercializing a certain product doesn’t lead to patent infringement.
5. Citation search: Here a key article, author, book or other patent based information or articles in the bibliography. The citations are normally listed in a patent document and specifically cite those cited by the examiner. This search sometimes leads to relevant articles from an unexpected discipline.
Apart from these classification systems other searches involve patent landscaping which is an extensive search conducted along with pictorial and graphical representations. The list in a patent landscape is exhaustive. Similarly due diligence search is a critical asset in IPR as companies do not want to indulge in unauthorized investments. This search is very important as the patents have the ability to drive the mergers, acquisitions and Initial public offerings. There have been instances where at the heart of the deal the product on which the company had spent so much time and finances was found to be ineffective for protection as it was too narrow in its claims or had some other person already being granted a patent for it.
Innovations and protection cost an arm and leg to the inventor. The search process save a fortune and also give scope for improvisation to the inventor thus giving a competitive advantage and develop strategic initiatives. Patent retrieval task cuts across the language and global barriers to bring an intellectually acclaimed work under one platform. Innovation, creativity and their protection have been the focus of the economies around the world. They are persistently discussing the need for growth in all the sectors and this could be achieved only through innovation and subsequently granting it an adequate protection.