Patent Search To Determine Patentability Of Invention / Patent Eligibility
A. Before spending time, money and resources for filing a patent application, it is strongly advisable to get a patent search conducted. A qualified patent attorney can determine patentability of an invention by analyzing relevant prior art references (published patent applications, granted patents and non-patent literature) in light of patent eligibility in accordance with patent laws of relevant jurisdictions.
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Patent Search Before Filing A Patent Application
While conducting a prior art search and performing patentability analysis, patent attorneys ensure that the search is comprehensive and corresponding analysis is thorough to include all possible embodiments of the proposed invention. Generally, the patent search results and compiled in the form of a detailed document known as patent search report.
Invention Disclosure for Patent Search
It is common for patent attorneys to ask their clients to provide information in specified formats with a view to conduct a patent search. Such specified format is usually termed as Invention Disclosure Form (IDF) and includes multiple questions that the client must answer in full detail. It is must to execute a Non-Disclosure Agreement (NDA) or Confidentiality Agreement before sharing such information with anyone, including patent attorneys. The IDF generally includes questions pertaining to, proposed title of the invention, important keywords, brief and detailed description relating to working of the invention, elements of the invention that are to be claimed, function and advantages of each element of the invention, novel aspects of the invention, problems that are solved by the invention, any known prior art that exist and are aimed at solving same (or similar) problems, and the like.
Expanding Scope of Invention
At the step of conducting a patent search and analyzing patentability before filing a patent application, the scope of the invention may be expanded to include related areas of application. For example, if invention relates to an automated robotic tool to be employed in automobile industry, the patent attorney may search related areas of utility with a view to expand scope of invention and see if any similar prior art exists. In this hypothetical case, one related area of application might be e-Commerce industry wherein use of such automated robotic tools may be useful.Therefore, as may be seen, such strategies can expand the scope of the proposed invention and provide additional protection to inventors and patent applicants.
Conducting Patent Prior Art Search
Before beginning a prior art search, it is advisable to formulate a patent search strategy. In essence, such strategy usually includes deciding relevant keywords, most relevant patent classification, related patent classifications, prior art search tools, resources, and the like.
Patent Prior Art Search Tools
The tools than can be used to conduct patent search can either be free or paid. Such tools provide a variety of options to inventors and patent applicants. Effectively, based on input provided, the patent search tools scan the text for key phrases, combine them into a set of search queries, and display the results from one or more resources.
Examples of free patent search tools include Google Patents, USPTO Full-text Database, WIPO, and the like.
Analysis of Patent Search Results
Once a patent prior art search is conducted, the patent attorney analyzes the results and performs a patentability analysis. One major goal of such analysis to determine patent eligibility is to determine necessary guidelines before drafting a patent application for the invention. The patent search results as well as patentability analysis can assist the patent drafter in focusing on novel aspects of the invention. Specifically, while drafting patent claims, the search results and patentability analysis can help in presenting differences between the claimed invention and already existing prior art. Subsequently, the patent claims have broader scope as they highlight significant novelty and non-obviousness of the claimed invention.
To conclude, conducting a patent search before filing a patent application provides significant advantages to the inventors and patent applicants, including, but not limited to, determining relevant prior art and market competition, drafting a better patent application, avoiding patent infringement and determining additional features of the claimed invention.
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