A patentability search is an analysis that is performed to understand whether the invention is patentable or not. It identifies prior art that may be relevant to the invention and helps to assess the likelihood of obtaining a patent. A patentability search is an essential step to be taken before filing a patent application.
Generally, there are three requirements for an invention to be patentable:
- Novelty: An invention is said to be novel under Section 2(1) (l) of the Indian Patents Act 1970 if it is not known to public i.e., anticipated in any manner, anywhere.
- Inventive Step: An invention is said to constitute an inventive step under Section 2(1) (ja) of the Indian Patents Act 1970 if the invention involves a technical advance as compared to the state-of-the-art and has economic significance or both. Also, it must not be obvious to a person skilled in that particular field of invention.
- Industrial Application: An invention is said to be useful if it is capable of being used in industrial setting under Section 2(1) (ac) of the Indian Patents Act 1970.
A patentability search report includes analysis of an invention based on the aforementioned patentability criteria. A patentability search must be conducted in the early stages of the drafting of the patent application to assess whether the invention should be further proceeded with or not. An inventor is expected to provide a detailed description of the invention including figures, images, and any other information that helps in understanding the invention, a set of draft claims and invention disclosure statement to perform a patentability search.
A patentability search has the following benefits:
- Helps in determining the strength of the invention as compared to the prior arts.
- Saves prosecution time: An invention disclosure statement contains references in the form of prior arts which have been already addressed by the invention and during patentability search, thus reducing the prosecution time.
- Helps in better understanding of the invention and the prior art, thereby increasing the chances of better scoping of claims.