When a person perceives an idea of a product or process which has popped in his/her mind or when the person 

       is ready with the design, prototype, product or methodology, the person may think of patenting.

      But, wait where you are. Before approaching a patent agent or a patent attorney for filing a patent application, shouldn’t you do a search for confirming your decision to patent?  

         There are many questions/queries now in the mind related to Patent Searching:

–          Why to do patent search?

–      What is the need to do a patent search?

–     Is it necessary to do a patent search?

–            Who does the patent search?

–           Which tools are used for patent search?

–          What can happen if the step of the patent search is eliminated and one directly files a patent application?

–        Is patent searching performed when the patent application is being filed through a patent agent or attorney?

–            How much one should rely on search report?

           Your questions are answered here:

–              Why do we do a patent search?

         The patent search is done for deriving an opinion whether the proposed invention possessed by one or more inventor(s)   is really an invention in terms of Patent Act Criteria’s:

                  1)  Novelty

       2) Inventive Step (technical advantages and economic significance)

                 One more criteria required to be fulfilled for patenting (apart from novelty and inventive step) is ‘industrial applicability’. This criterion can be judged by oneself whether the product and/or process cater ‘industrial use/industrial application’ and hence shall not be considered while performing a search.

–                What is the need to conduct a patent search?

         When a patent search is conducted, one is aware whether the proposed invention fulfills the criteria to get a patent in terms of novelty and inventive step. After the search results, inventors can:

·                file the patent application when no similar or substantially similar documents are obtained in search results;

·                   hold the thought of filing the patent application to make improvement in the proposed invention before filing the patent application; or

·             completely drop the idea of filing a patent application when similar documents are obtained in search results.

          Is it necessary to do a patent search?

             The inventors are basically a person working in the field of invention for a good amount of time and may have conducted a research while inventing. Hence, if the inventor is quite sure that invention is really novel and inventive then  there is no need for opting patent search. For example, if an inventor has made a composition of a medicament to treat COVID-19 patients or a jacket that provides social distancing, the inventor is actually sure of his/her work, isn’t it? On the other hand, when the inventor is not sure that the proposed invention is completely new, yes, he needs to opt for patent    search.

–                 Who does the patent search?

               The inventors can get the search done through a patent agent or a patent attorney. Or else, the inventors can also conduct the self-search based on the below mentioned ‘Steps for Patent Searching’.

                 The self-search will help to save on total patenting cost.

                  Though one needs to spend the cost on Patent search through the Patent agent or a patent attorney, it is recommended to contact the patent agent or attorney when the invention is critically close to the existing product or process.

–             Which tools are used for patent search?

          There are paid patent search databases and unpaid patent search databases/free databases for patent search. If the inventor wishes to conduct patent search then unpaid or free databases can be used. Some of the free databases or unpaid databases are as follows:

            1) Google Patents

            2) Worldwide Espacenet

            3)  Indian Patent Search

            4)USPTO search database engine

            5)  Free Patents

          Some of the paid databases or professional patent search databases are provided by Thomson Reuters innovation analyst, STN PatentPak, Microsoft PatBase, Patseer and the like.

–               What can happen if the step of the patent search is eliminated and one directly files a patent application? 

               Firstly, one directly files a patent application when convinced that the invention is really new and novel because of his/her domain expertise. During patent application examination, the patent examiner may cite documents for which a suitable and convincing response has to be submitted in order for grant. 

–              Is patent searching performed when the patent application is being filed through a patent agent or attorney?

                  Patent agent or patent attorney may or may not conduct a search for the proposed invention and one need to check the  quotation.

–                    How much one should rely on search report provided by the patent agent/patent attorney?

              The patent agent/patent attorney tries to provide the best report based on the experiences, however, as there is manual intervene for searching, scanning and analyzing documents, there can be overlooking of few documents. While reading the search report, you may read the keywords and strategies used to find the documents. 

       Steps to conduct free patentability search, patent search, novelty search

                1) Prepare a list of all the key features of the proposed product and process;

                2) Find synonyms of each word of the key feature;

                3)Feed the search strategies on any of the free search database or paid search database to get search results;

               4)Scan few documents from the documents obtained from the search results and check its relevance;

                5)  If the search result does not show relevant documents stop scanning and try a new search based on combination  of keywords;

              6) Once a relevant document is received then look for the IPC/CPC code along with the search strategy and scan the documents;

     7) Search for most relevant documents and when the most relevant documents are shortlisted note the inventors and  applicants;

                8) Conduct inventor search and applicant search; and

            9)Conduct forward and backward citations search.

        Well that’s a lot to do, isn’t it?

         But before thinking of initiating the search, let us first understand the structure of a patent specification and the important parameters required for patent search. The patent specification has the following content:

               1) Application number and/or Patent Number

          Application number is the number received at the time of filing the patent application. Patent Number is the number received after the grant of the patent.

          In search, if one knows any specific application/patent number then directly feed in the search engine retrieve the document.

             2)      Priority date

        Priority date is the date of the first filed application. The priority date informs us when the application was filed.      

     3) International Patent Classification (IPC) or Cooperative Patent Classification (CPC) Codes

         Each patent application after filing is classified into IPC/CPC class, subclass, main group or subgroup provided such that similar patent documents fall in one category.

          In patent search, if one manages to identify/fetch the IPC or CPC code, then all other documents in the code can be   scanned. 

          IPC codes are used in more than 100 countries to classify patents and CPC codes can be used for searching   particularly US and EP documents.

         A sample of the IPC code in a patent specification

Here is the link to get access to the IPC codes – https://www.wipo.int/classifications/ipc/en/

       How to fetch IPC/CPC codes is described in details below in this article.

               4)      Title of Invention

        Title provides brief information of the context of the patent specification.

          In patent search, most of the paid and free databases have a search box in which user can input search term/keywords and retrieve related patent documents whose title possesses the words used in the search term.

         How to use the title search box or conduct a patent title based search?

         Think of what title or probable words that can be used in a title of patent specifications related to the product or process for which the search is conducted.

           For example: if the invention is about a hanging utensil holder, then search for utensil holder in the title search box as it  is likely that the words ‘utensil holder’ should be a part of the title, however, the word ‘hanging’ may or may not be a part of the title.

We will receive documents containing the words utensil holder in the title

A number of searches can be conducted in similar manner with various synonyms or appropriate like-words such as utensil carousel, utensil organizer, utensil rack or utensil basket.

                5)      Field of Invention

            Field provides more information of the invention and during search the field can be read for receiving more       information if one does not get clarity of the content from the title.

                6)  Background and Prior-Art of the Invention

              Background states the drawback of conventional product or process and during search one may overview the       content  to understand what the need for the product and/or process was? 

                 7)  Summary of Invention

               Summary provides more details of the essential features of the product and/or process and while search it provides more understanding of the product and/or the process.

                8)      Objects of Invention

            In some countries, objects are a part of the summary while in others, objects are a separate section. In search, an  overview of objects can be performed to understand the essential goal/achievement of the product and/or process.

                9)      Brief description of the drawings

           This section describes the drawings attached with the specification and during search one can read to understand the               drawings.

                 10)   Detailed description of Invention

           In this section, more details of the essential features of the product and/or process are provided. During search, if one  requires more details or variation of the essential features as read in claims, abstract or summary, then the detailed  description should be read. 

               11)   Claims

          Claims are techno-legal statements. Claims contain all elements or steps without which the invention cannot work and    hence while search it is recommended to see, read and understand the claims. Claims are of two types: independent claims and dependent claims. Independent claims describe the essential elements of the invention and dependent claims describe the optional features.

          How to identify independent claims and dependent claims?

         The dependent claims always initiates with:

           ‘The (product name or method name)as claimed in claim (Number)’

               OR

           ‘The (product name or method name)of claim (Number)’

           It should be noted that the dependent claims always shows dependency on the other claim(s).

          Whenever there is no dependency on other claims, such claims are independent claims.

        For search, independent claims needs to be read and if the independent claim is close to our product or process then dependent claims should be read.

              12)   Abstract 

         Abstract is brief write-up of the invention and highlights the essential elements used in the invention. As essential elements are a part of abstract, it is important to read the abstract while search so as to get an idea of the content. 

            13)   Drawings

        Drawings may not be provided for each specification (especially for chemistry and pharmaceuticals specifications), however, whenever drawings are provided one should view the drawings to get an idea of the product. Flowcharts of  processes/methods also may be provided and should be viewed during search.  

         Various paid and/or free search databases have various heads to conduct the search. The various heads includes:

                 –          Title

                 –          Abstract

                  –          Claim

                 –          Complete Specification

                –          Application Number

                 –          Patent Number

                 –          IPC/CPC code

                –          Applicant Name

                  –          Inventor Name

           Pro-tip: To conduct a search of a product or a process, it is recommended to search in title, abstract and claims and if  details of any element or feature are required then search in the summary, detailed description and the drawings.

         Let’s make a search together and make the search process easier.

          INVENTION FOR WHICH SEARCH IS REQUIRED TO BE PERFORMED IN FREE DATABASES:

        This is a compact and multi-utility laboratory apparatus that facilitates performing multiple laboratory  activities/processes in a confined space. The apparatus includes a housing, a aperture element, a slide and a cap. In    accordance with the need of the user, the user can position the aperture element, the slide and/or the cap. The aperture element has apertures for receiving holding elements like test tubes, vials, micro centrifuge tubes, cuvettes and/or  stirring elements. The slide can be used to receive samples to be examined thereon or as a slide staining tray. The cap   when positioned on the housing form a sealed environment therewithin and hence enables the apparatus to act as an  incubator with high, low or humid temperature conditions or can act as a storage box.    

MULTI-UTILITY LABORATORY APPARATUS

                List the KEY FEATURES of the Invention:

     a)      Multi-utility

     b)      Laboratory apparatus

    c)       Housing

   d)      Aperture element/aperture/test-tube holder

       e)      Slide

       f)       Cap

       g)      Incubator

              From the key features, one should search for a document that has test-tube holder, slide and incubator.

      1) Search by use of GOOGLE IMAGE SEARCH

                     1)   Test tube rack

                   2)     Test tube rack with glass slide

                 3)  Similar other text by use of incubator, test-tube, slide, laboratory apparatus and their synonyms

       Check if any similar drawing is achieved and visit the website to get more detail of the product or process.

                 If the given image of the product or process provides same features of your product then think of improvising  your  product. In case if you cannot make comparative judgments on the newness of your product, then contact a  patent attorney or a patent agent.

            (Hint: Use the GOOGLE IMAGE SEARCH if the product is a generalized one

             For Examples:

                       1)    Pen with stand

                       2)   Magnet lock with key)

            2) Search by use of GOOGLE PATENT SEARCH

          (Hint: Search for the International Patent Classification [IPC] code or Cooperative Patent Classification [CPC] code. IPC/CPC codes can be more than 1

              STEP 1: Type some keywords or combination of keywords in Google Patents (in the same way as we use Google  search)

For example: 1) test-tube holder

                        2) incubator for laboratory apparatus

                    3) test-tube holder, slide and incubator

              (Hint: Ensure all important key features are searched so as to get all IPC codes)

Sample screen-shot of filling a key words in the query box of GOOGLE SEARCH

           STEP 2: For each queries searched, screen few of the documents having related subject-matter (which according to  you as a domain expert is more relevant by reading title) of test tube holder or laboratory apparatus. Open few documents and check the IPC or CPC code and view the description of the IPC and CPC code as shown in the below  image.

 Sample screen-shot of a patent document opened by the query ‘test tube holder’ in GOOGLE SEARCH

        Understanding the IPC code B01L9/06 which we got in our shortlisted document

       As we see in the above image each letter/number of the code B01L9/06 has some significance.

        B – Performing operations and transporting

       B01 – Physical or Chemical processes or Apparatus in General

       B01L – Chemical or Physical laboratory apparatus for general use

       B01L9/00 – Supporting devices; holding devices

       B01L9/065 -Test-tube stands, test-holders specially adapted for capillary tubes

      Thus, we see that IPC code B01L9/065 is the for test-tubes, however, documents describing glass slides or incubators may not be covered in the code B01L9/065 and hence we need to search in B01L9/00 which will show all documents related to supporting device or holding device that will include test tubes as well as glass slides. As we are reducing our          code from the B01L9/065 to B01L9/00, there will be more number of patent documents covered as we are broadening our   search. Thus, the code should not be too broad (like B01 or B01L) as it will simply increase the documents to be screened and analyzed.

     However, the documents still may not cover incubators. Hence, run one more query in Google patent search for incubators  used in laboratory and try to fetch a document. An example is shown below:

Sample screen-shot of a patent document opened by the query ‘incubator for laboratory apparatus’ in GOOGLE SEARCH

          Thus, we see that B01L is common in both the above documents, hence we will search in code B01L Also, we have    some new codes C12M which mentions incubator related documents and hence C12M need to be scanned also.

           Also, to know nearby codes of C12M visit the below link and see if there is any specific one to select

            https://www.wipo.int/classifications/ipc/en/

            Click the tab which states – ACCESS THE INTERNATIONAL PATENT CLASSIFICATION and view any classes

            STEP 3: Now, in GOOGLE PATENT ADVANCE SEARCH perform a classification/IPC/CPC code search

                  (Hint: There will be too many patent documents upon searching with IPC/CPC code and hence also use some  shortlisted keywords that is not a part of the IPC/CPC code description)

Sample screen-shot of a GOOGLE ADVANCE PATENT SEARCH ENGINEWITH CLASSIFICATION

                 From the above search, it is observed that the result shows around 3240 documents. Read the titles of first few documents and see                                  whether there are any relevant documents. We will observe that there are many documents relating to laboratory apparatus, (like Removable                    tray for volumetric flask, strip holder for use in a test strip meter, however the documents have completely different context than test-tube  holder, slide or incubator. 

Sample screen-shot of theresults for CLASSIFICATION search

           Hence, we will now need to add KEYWORDS ALONG WITH CLASSIFICATION SEARCH as shown below:

Sample screen-shot of a GOOGLE ADVANCE PATENT SEARCH ENGINEWITH CLASSIFICATION AND KEYWORDS

               From the above search, it is observed that the result shows around 844 documents. View few documents and then take a call whether the                     query needs to be re-defined and re-run. Continue the search process by various iterations till relevant documents are found. You can add more IPC/CPC codes and run the search. Further, you can re-define keywords based on the results received. Scan the document received from the                 search results and shortlist the documents that are similar to our invention. The shortlisting of documents can be made in two categories,    namely:

                 1)     Most relevant documents

                 2)     Relevant documents

          Most relevant documents are those documents that are really close to our invention and the relevant documents are those documents which  according to us are not exactly as our invention but it is of similar nature. The relevant documents are shortlisted because we can get the names of applicants and inventors to conduct applicant and inventor searches.

             How to determine whether our concept is novel and has inventive step?

              Novelty Check: If all the features of our concept are found in a document then our concept lacks novelty

            Let’s make it easy

              Make the following table:

 Interpretation of the data:

           It is seen that the 1stshortlisted document does not include element B but includes element A and element C, thus the 1stshortlisted document              will not affect our novelty

        However, the 2nd shortlisted document shows all the elements A, B, C of our invention and hence the 2nd shortlisted document will destroy our     novelty.

          What to do if the novelty is destroyed?

         How to overcome novelty?

        In order to overcome such situation think if we can add-on or delete or make some changes in the existing feature(s)/element(s) that will result in          technical advancement and/or economic significance.

       Inventive Step Check: If all the features of our concept are found in combination of documents (like 3-4 documents) then our concepts lack                inventive step

        Let’s make it easy

       Make the following table:

Interpretation of the data:

      It is seen that the 1stshortlisted document does not include element B and C, the 2nd shortlisted document shows the element B and the 3rd                      shortlisted document shows the element 4. As all the documents show all the elements, it can be concluded that there is no inventive step.

       What to do if the inventive step is destroyed?

      How to overcome inventive step?

        In order to overcome such situation think if we can add-on or delete or make some changes in the existing feature(s)/element(s) that will result in          technical advancement and/or economic significance over the four documents.

     STEP 4 (Optional Step): Now, in GOOGLE PATENT ADVANCE SEARCH perform inventor or applicant search

     From all the above shortlisted documents, list all inventors and applicants and accordingly search in the below highlighted       sections.

      This search is conducted so that similar patents can have been filed by the inventor and applicants as they are working in        the specific domain and we may have missed out such applications during our search. This is an optional step as if one            gets a similar documents from the classification search then this step may not be performed. 

STEP 5 (Optional Step): Now, in GOOGLE PATENT ADVANCE SEARCH perform forward and backward citations search

          What does forward and backward citation mean for a patent document?

           Whenever we get a close patent document, we can need to check the backward and forward citations. Backward                         citation means to check all documents which the examiner had cited at the time of examination. Forward citations                    means to check all documents for the examination of which the examiner has cited the close patent document.

            Furthermore, the similar search can be conducted in various other free databases as follows:

                     1)  Indian Patent Search Database of Indian Patent Office

                            https://ipindiaservices.gov.in/PublicSearch/

                     2)  European Patents from Espacenet

                            https://worldwide.espacenet.com/

                        This website also provides translations and patent documents of other countries like US, China, Japan and the    like

             3)      United States Patent Search of USPTO

                      https://www.uspto.gov/patents-application-process/search-patents#heading-1

           4) Free patents for US documents

                        http://www.freepatentsonline.com/search.html

          3)    Non-Patent Literature Search