In the realm of intellectual property (IP), patents serve as powerful tools for protecting inventions and granting inventors exclusive rights over their creations. It is important to note that not all innovative concepts meet the criteria for patent protection. Before engaging in the often costly and time-consuming patent application process, it is essential to evaluate whether an invention meets the fundamental criteria for patentability. This is where a patentability search becomes an essential step. This article explores what a patentability search entails, how it is performed, why and when it should be performed, who carries it out, and challenges in conducting the search, particularly under the framework of the Indian Patent Act, 1970.
Why is a patentability search done?
A patentability search, also known as a novelty search, evaluates the uniqueness and inventiveness of a proposed solution in comparison to existing prior art and publicly available knowledge. According to Indian legislation, these requirements are specifically defined under Sections 2(1)(j) and 2(1)(ja) of the Indian Patent Act., which define an “invention” and “inventive step,” respectively.
The main purposes of carrying out such a search include:
- It prevents unnecessary expenditure on patent applications that are likely to be rejected due to lack of novelty or an inventive step.
- Identifying existing prior art allows inventors to draft claims more strategically, thereby increasing the chances of obtaining a patent.
- The search assists in determining whether to move forward with a patent application or make further refinements to the invention.
- Understanding the existing patent landscape reduces the risk of infringing on other patented technologies.
When should a patentability search be done?
It is advisable to conduct a patentability search before filing a patent application. Ideally, this should occur after the invention is fully conceptualized but before any public disclosure such as publishing, exhibiting, or discussing the invention publicly. According to Section 29 of the Indian Patent Act, any such public disclosure before filing can be considered “anticipation”, thereby invalidating the invention’s novelty.
How is a patentability search conducted?
A patentability search starts with clearly defining the invention, highlighting its novel features, intended use, and the specific problem it aims to solve. Based on this, relevant keywords and patent classification codes (like IPC or CPC) are identified to form effective search strategies. Searches are carried out using major patent databases, including InPASS, WIPO’s PATENTSCOPE, USPTO, Espacenet, PatSeer, PatBase, Orbit and Google Patents. To ensure comprehensive coverage, non-patent literature (NPL) like research papers, product manuals, and academic publications are also reviewed.
Once prior art is collected, it is carefully analyzed to evaluate similarities and differences with the invention. These findings are compiled into a search report assessing the invention’s potential patentability. This step is crucial in light of Section 2(1)(l) of the Indian Patent Act, which specifies that any public disclosure before the filing date can compromise the novelty of an invention. Thus, a well-executed search helps inventors make informed decisions and avoid costly rejections.
Who conducts a patentability search?
Patentability searches can be performed by a range of individuals and organizations:
- Inventors, students, and startups may conduct basic online searches using public databases.
- Registered patent agents and patent attorneys, authorized in accordance with Section 126 of the Patents Act., are legally qualified to perform detailed searches and file patent applications.
- IP law firms and professional search firms utilize advanced tools and databases to provide comprehensive patentability reports.
- Corporate R&D teams often work in collaboration with legal professionals to assess innovation and file applications.
While basic searches can be done by inventors themselves, professional assistance is highly recommended for interpreting search results and understanding and avoiding the legal implications.
What are the challenges in conducting a patentability search
A patentability search is an essential early step in the innovation lifecycle, yet it presents several practical and technical challenges. One of the primary hurdles is the need for strong domain-specific knowledge to accurately understand the invention and interpret related prior art. Further, formulating effective search queries requires selecting the right combination of keywords, and Cooperative Patent Classification (CPC) codes. If not done carefully, this can lead to the omission of critical prior art. Access to comprehensive and reliable databases is another limitation. While several free tools like InPASS, Espacenet, and Google Patents are available, many professional-grade databases offering deeper analytics and multilingual coverage are subscription-based. Language is also a barrier, patents are often filed in non-English languages, and key disclosures may be lost in translation or difficult to interpret without linguistic expertise. Another challenge lies in accessing offline or non-digitized disclosures, which are especially relevant in traditional knowledge or older documentation. Additionally, in sectors like pharmaceuticals, issues such as double patenting and evergreening further complicate the search process. These require careful scrutiny to ensure that new filings demonstrate enhanced efficacy and are not merely slight modifications of existing patents. Failing to account for exclusions under Sections 3 and 4 of the Indian Patent Act or relying solely on Indian databases without exploring global and non-patent literature can lead to incomplete analysis, resulting in rejections or delays.
This article provides a comprehensive overview of patentability searches within the Indian legal framework. It explains their importance in evaluating novelty and inventive step before filing a patent, outlines the search process, highlights who conducts them, and discusses the legal and practical challenges involved. Conducting a well-structured search helps avoid costly rejections and supports informed patenting decisions.
How RK Dewan & Co. delivers strategic and reliable patentability searches?
Conducting a comprehensive and legally sound patentability search requires more than just access to databases, it calls for technical expertise, strategic search skills, and a deep understanding of patent law. At RK Dewan & Co., we recognize these complexities. Our multidisciplinary team combines decades of experience across domains such as life sciences, engineering, information technology, and materials science to address challenges like language barriers, offline disclosures, domain-specific terminology, and evergreening in pharmaceuticals. We leverage advanced Indian and international databases, apply effective keyword strings, IPC/CPC classifications, and citation analysis, and include non-patent literature to ensure complete prior art coverage. Our attorneys and technical experts work together to align search results with the Indian Patent Act, delivering precise, actionable reports. With RK Dewan & Co. as your partner, you gain confidence that your invention is assessed thoroughly and strategically, forming a strong foundation for successful patent protection in India and worldwide.
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