The number of patents being filed is increasing every year. For instance, in 2014-2015, around 42,723 patent applications were filed in India. Whereas, in 2004-2005, 17,446 applications were filed. This means that there was a leap of 250% in the past ten years. Does this mean that nearly every patent filed is being granted?
Not really. One must understand that not all patent applications that are filed result in registration. The primary reasons for rejection of an application are either-
(a) The invention is not novel; or
(b) It is obvious i.e. it does not involve inventive step.
This is where the importance of a patent search lies. Conducting a patent search helps an Applicant understand if his invention is patentable or not.
What is a Patent Search?
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 patent 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 the invention.
Why Conduct a Patent Search?
Filing a patent is an expensive process. The official fees (statutory fee) for a basic patent filing can be anywhere from INR.5,600 – INR.28,000. Besides the official fees, the fees of the attorney or agent also need to be considered. Imagine spending money on trying to get a patent, only to find out that your invention was never patentable! A patent search avoids this situation.
Besides financial reasons, there are several other compelling reasons for conducting a search before filing a patent application in India or globally.
1. A patentability assessment can help you understand whether your invention is patentable and if so, how far can it be protected. For example, computer programs, per se, are non-patentable but computer programs that are manifested in a useful way can be patented.
2. A patent search reveals the prior art in your field of invention. This will come in handy when drafting the patent specification. The knowledge of prior art will help you determine if your invention has any value addition over the prior arts. This will reduce the chances of rejection by the Patent Office.
3. If your invention has no value addition then understanding the prior art will help you refine your invention so as to make it patentable.
4. 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.
5. Ordinarily, every Applicant wants his patent to become commercial and therefore a source of finances. A patent search not only reveals inventions similar to your invention but also the commercial value of the invention in the economy. Based on this you can determine the commercial value of your invention.
6. Another important reason for conducting a patent search is 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 means that competitors can get free access to his hard work. A patent search helps avoid such a situation. Even if your invention is not patentable according to law, you can use it as a trade secret and gain revenue.
Despite the fact that free patent databases allow anybody to conduct a patent search, it is important 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 build 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 the management of patents.
Further, you may be interested to read How to conduct Indian Patent Search?