PRIOR ART SEARCHES

A high level overview of types of searches conducted in the field of patent analytics.

1. PRIOR ART SEARCHES TYPES AND SEARCH CRITERION PREPARED BY GURPAL SINGH IN/PA - 2732

2. 1. PATENTABILITY SEARCHES To identify prior art references that may be disclosing an invention as described in an invention disclosure form/document. TYPES OF REFERENCES: Granted Patents, Published Patent Applications, Research Papers, Blogs, Press Releases, Publicly Available Audiovisual Content (For Example Through Video Libraries And Online Content), Products, Services, Product Specifications, Service Descriptions, and Books. DATE RESTRICTION: NONE (All the publicly available references on the date of initiating of the search).

3. 1. PATENTABILITY SEARCHES - METHODOLOGY Identify constructional, operational, and functional elements of the invention. Identify keywords from invention disclosure. Identify applicable patent classifications – COOPERATIVE PATENT CLASSIFICATION ( CPC ), INTERNATIONAL PATENT CLASSIFICATION ( IPC ), UNITED STATES PATENT CLASSIFICATION ( USPC ). Generate search strings and run the search strings on free databases (PATENTSCOPE, ESPACENET, GOOGLE PATENTS, LENS, FREEPATENTSONLINE, GOOGLE SCHOLAR, GOOGLE BOOKS, YOUTUBE, GOOGLE.COM) and paid databases (QUESTEL ORBIT, DERWENT INNOVATION).

4. 1. PATENTABILITY SEARCHES – NOVELTY AND INVENTIVE STEP/OBVIOUSNESS ASPECTS NOVELTY – All the identified constructional, operational, and functional elements of the invention are available through a single reference or a group of documents acting as a single reference (For example: a research paper citing other research papers forms a group containing the research paper and the other cited research papers acting as a single reference). INVENTIVE STEP/OBVIOUSNESS – All the identified constructional, operational, and functional elements of the invention are available by combining two or more references belonging to the same field of invention or serving the same purpose as the invention disclosed in invention disclosure.

5. 2. INVALIDITY SEARCHES To identify prior art references that may be disclosing an invention as claimed in a claim of a patent application or a granted patent. TYPES OF REFERENCES: Granted Patents, Published Patent Applications, Research Papers, Blogs, Press Releases, Publicly Available Audiovisual Content (For Example Through Video Libraries And Online Content), Products, Services, Product Specifications, Service Descriptions, and Books DATE RESTRICTION: (1) All references publicly available before the priority date of the claim under study, (2) All patent applications and granted patents filed before but published after the priority date in the same jurisdiction as the patent claim (for example, a claim filed and/or granted in Europe will be invalidated by a paten application or a granted patent that was filed with European Patent Office before but published after the priority date of the claim).

6. 2. INVALIFDITY SEARCHES - METHODOLOGY Identify constructional, operational, and functional elements of the claim(s) under study. Identify keywords from invention disclosure. Identify applicable patent classifications – COOPERATIVE PATENT CLASSIFICATION ( CPC ), INTERNATIONAL PATENT CLASSIFICATION ( IPC ), UNITED STATES PATENT CLASSIFICATION ( USPC ) Generate search strings and run the search strings on free databases (PATENTSCOPE, ESPACENET, GOOGLE PATENTS, LENS, FREEPATENTSONLINE, GOOGLE SCHOLAR, GOOGLE BOOKS, YOUTUBE, GOOGLE.COM) and paid databases (QUESTEL ORBIT, DERWENT INNOVATION).

7. 2. INVALIDITY SEARCHES – NOVELTY AND INVENTIVE STEP/OBVIOUSNESS ASPECTS NOVELTY – All the identified constructional, operational, and functional elements of the claims are available through a single reference or a group of documents acting as a single reference (For example: a research paper citing other research papers forms a group containing the research paper and the other cited research papers acting as a single reference). INVENTIVE STEP/OBVIOUSNESS – All the identified constructional, operational, and functional elements of the claims are available by combining two or more references belonging to the same field of invention or serving the same purpose as the invention disclosed in invention disclosure.

8. 3. FREEDOM TO OPERATE (FTO) SEARCHES To identify granted patents and live patent applications that a given product is liable to infringe if launched in a given jurisdiction (for example, India, Europe, United States). The product may be a good or a service. TYPES OF REFERENCES: Granted Patents and Published Patent Applications filed within the same jurisdiction. Published PCT international applications with priority date within forty (40) months of the date of the performance of search. DATE RESTRICTION: All patent applications and granted patents with priority date within twenty-one (21) years (additional one year to account for patent term adjustment) of the date of the performance of search.

9. 3. FTO SEARCHES - METHODOLOGY Identify constructional, operational, and functional elements of the product under study. Identify and/or generate keywords. Identify applicable patent classifications – COOPERATIVE PATENT CLASSIFICATION ( CPC ), INTERNATIONAL PATENT CLASSIFICATION ( IPC ), UNITED STATES PATENT CLASSIFICATION ( USPC ) Generate search strings and run the search strings on free databases (PATENTSCOPE, ESPACENET, GOOGLE PATENTS, LENS) and paid databases (QUESTEL ORBIT, DERWENT INNOVATION). Compare the constructional, operational, and functional elements of the product for their presence in claims of the patent documents identified.

10. 3. FTO SEARCHES – CLAIM INFRINGEMENT For a claim to be infringed, all of the elements of the claim should be available in the product and not the other way round. That is even if a product has additional elements to those recited in the claim, the claim would still be infringed if the product has each one of the elements recited in the claim. Check the formal validity of the identified claims (for example, application abandoned, maintenance fee not paid, the patent document belonging to the same owner as the product etc.) Check substantial validity of the identified claims (if any other patent document(s) uncovered during the search invalidates the identified claims through novelty and/or inventive step aspect). If required run a secondary invalidity search for the most relevant claims.

11. 4. INFRINGEMENT SEARCHES To identify products (goods and services) that are infringing upon given subject patent claim(s) in a given jurisdiction (for example, India, Europe, United States). TYPES OF REFERENCES: Product literature, brochures, pamphlets, product specifications, press releases, user manuals etc. DATE RESTRICTION: All products launched in the given jurisdiction on or after the priority date of the subject patent claims.

12. 4. INFRINGEMENT SEARCHES - METHODOLOGY Identify constructional, operational, and functional elements of the claims under study. Identify and/or generate keywords. Generate search strings and run the search strings on open web Google, Bing, Bard, ChatGPT, etc. Compare the constructional, operational, and functional elements of the claims for their presence in the product literature extracted from the search. *NOTE: Here again for a claim to be infringed, each one of the constructional, operational, and functional elements of the claim should be present in the product.

13. 5. STATE OF THE ART SEARCH AND LANDSCAPE ANALYSIS To identify research and development ongoing in the given technical field or being performed by a given organization. TYPES OF REFERENCES: Granted Patents, Published Patent Applications, Research Papers, Blogs, Press Releases, Publicly Available Audiovisual Content (For Example Through Video Libraries And Online Content), Products, Services, Product Specifications, Service Descriptions, and Books . DATE RESTRICTION: All literature available as per the given timeline (for example, in last 10 years, 5 years, since the inception of a company etc.).

14. 5. STATE OF THE ART SEARCH AND LANDSCAPE ANALYSIS Identify and/or generate keywords based on the technical field or name of the company. If the company is a conglomerate, entire list of all the holdings would need to be identified Identify applicable patent classifications – COOPERATIVE PATENT CLASSIFICATION ( CPC ), INTERNATIONAL PATENT CLASSIFICATION ( IPC ), UNITED STATES PATENT CLASSIFICATION ( USPC ) Generate search strings and run the search strings on free databases (PATENTSCOPE, ESPACENET, GOOGLE PATENTS, LENS, FREEPATENTSONLINE, GOOGLE SCHOLAR, GOOGLE BOOKS, YOUTUBE, GOOGLE.COM) and paid databases (QUESTEL ORBIT, DERWENT INNOVATION).

15. 5. STATE OF THE ART SEARCH AND LANDSCAPE ANALYSIS - REPORTING Identify technical terms and phrases in the retrieved documents. Categorize the technical terms and phrases in several cascading categories. Identify timewise development of the technology identified from the technical terms and phrases (monthly, quarterly, yearly, etc.) Identify most cited assignees and inventors. Generate heat maps, bubble charts, pie charts, bar graphs, trendlines etc. to communicate the results visually. Generate an executive summary, summarizing the overall findings of the search activity.

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