Patentability Search- Importance and How to Do Patentability Search

1. Consultants Applying Intelligence to IP – Globally Novelty/Patentability Search Topics • Conditions for patentability • What is patentability • Importance of a patentability search • State of the art search • How to do a quick search? • Search databases • Provisional & Non-provisional applications TT Consultants

2. Patentability Tests / Criteria The Supreme Court has said that patents cover “anything under the sun that is made by man”. Must fall within five Statutory Classes : Processes Machines Manufactured items (objects made by humans or machines) Compositions of matter, and New uses of any of the above Conditions for Patentability: Novelty (i.e. new) - Invention not known to public, prior to claim by inventor Non-Obviousness (i.e. inventive step) - Invention would not be obvious to a person with ordinary skill in the art Usefulness (i.e. industrial applicability) - Invention can be made or used in any useful, practical activity as distinct from purely intellectual or aesthetic one TT Consultants Pvt. Ltd 2

3. What is a Patentability Search? “Patentability search” or “Novelty search” is probably the most common type of patent search. The search attempts to determine whether a specific invention is within the scope of the patentable subject matter. Patentability search can be performed much earlier during the development of an invention, it is more commonly performed prior to submitting a patent application to check the feasibility of the invention. Purpose The purpose of this type of search is to determine whether there are any previous patents (prior art) that might prevent the inventor from patenting his or her idea Another benefit is that the inventor can be spared the expense of filing a patent application, since the filing fee is not refunded, if the application is rejected. 3

4. Why conduct a Patentability Search? • Large investments are made in R&D initiatives • Huge costs are involved in filing and maintaining patents • At each step of your research a number of ideas/inventions may seem patentable. It becomes imperative to decide what inventions should be protected and what should be modified or discarded. • Patentability searches help identify novelty of your invention and existence of any relevant prior art, which can help orient the future R&D strategy and decision making. • Building up a strong patent portfolio is necessary not only to avoid future litigations, but also assert the patent in case of an infringement • As opposed to the conventional idea of being an extra expense on the company, novelty searches are always a good return of investment (ROI) in the long run. 4

5. Patentability and State of the art Search Patentability Search Conducted upon receiving a brief invention disclosure or exemplary claim. All disclosures and drawings/figures are reviewed prior to search. Involves a global search for patents (both unexpired and expired), patent applications, and technical literature (non-patent literature), over and above what an examiner searches to improve the quality of the application. A patentability opinion (provided by a patent attorney/agent) is necessary, prior to drafting a complete patent specification. State of the Art Search Conducted upon receiving a new idea or business method (that has still not been developed), a general product description or a technology of interest that you might want to explore. All issued patents are analyzed, expired or not. Because a product may have more than one invention associated with it, this search is usually more comprehensive and may result in a large no. of citations related to the new idea. Scope of the search is much broad and the analysis is less strict than if the search were for your use in determining patentability or infringement. 5

6. Quick Novelty Search 6

7. Patent and Non-Patent Databases Paid Databases XLPAT Questel Orbit Thomson Innovation Patbase Free databases Google Patents Espacenet USPTO (United States Patent and Trademark Office) allows the public to freely search on their website, USPTO.gov Other national offices databases. Country Specific Databases: Japan- PAJ Germany – DPMA register Singapore- IPOS Korea- KIPRIS, etc. Non-patent search databases IEEE Xplore ASME ACM NCBI PubMed ScienceDirect Google Scholar IP.com Semi wiki EDN EETAsia Elsevier 7

8. Provisional and Non-Provisional Application Non-Provisional Application Establishes an invention's filing date (unless it claims the benefit of an earlier filed application, such as a Provisional Application). Filing a Non-Provisional Application starts the official examination process to determine if the invention is patentable. Non-provisional applications are confidential documents not available to the public unless and until published and/or issued as a patent. Non-Provisional Applications are subjected to official examination Provisional Application A simple and inexpensive way to begin protecting your invention. Gives you extra time to decide whether to pursue the full patent application or not. Provisional Applications are confidential documents not available to the public (unless and until a subsequent non-provisional is publicly available) Moreover, Provisional Applications will not be subjected to examination by patent office. • Further, because a provisional patent application (PPA) is not made public unless its application number is noted in a later-published application or patent, the failure by an applicant to file a non-provisional application based on his/her PPA will not lead to public disclosure of his/her invention. 8

9. About TT Consultants (TTC) • TT Consultants (an ISO-27001 and ISO-9001:2008 certified company) is a leading global patent search and analtytics firm. We assist client across 30 different countries with all kinds of patent prior art searches including patentability, state of the art, validity/invalidity, freedom to operate, infringement, technology landscapes, patent watch etc. and patent drafting and filing support. • Global presence through offices in three different locations i.e. US, India and Taiwan; • A team of 120+ IP professionals - USPTO Examiners, Patent Agents, and Engineers; and native search teams for Chinese, Japanese, Korean and Taiwanese patent searches. • Rated as the Top Company in Patent Searches in India in an evaluation conducted by a sub group of Japan External Trade Organization (JETRO). The report published in May 2015 was based upon an open evaluation of about 30 companies wherein they were given a few searches to run. TT Consultants Pvt. Ltd 9

10. Patentability / Novelty Searches at TTC • Extensively used by top universities/research institutes in Asia • Quick turnaround time of 3-4 business days, which can be further expedited • Subscription to leading Patent & Non-Patent databases. Database coverage of more than 120 countries across the globe, including in-house patent and non-patent search database • Competitive cost options ($30 per hour) • Innovative search reports that come along with a key feature analysis chart and many value additions offered by none other in the industry • Automated patentability search tool on XLPAT • To know more about TT Consultants and our services, please visit www.ttconsultants.com or send us an email at n.mahajan@ttconsultants.com TT Consultants Pvt. Ltd 10

11. India | US | Taiwan Consultants Applying Intelligence to IP – Globally • Corporate Headquarters • Mohali, India • Office 413-413 A, Tower A, 4th Floor, Bestech Business Tower, Sector- 66, Mohali, Punjab – 160055, India • Other Location • Gurgaon (India) • Unit number 252, 2nd floor ,Tower B2, Spaze I-Tech Park, Sector 49, Sohna Road, Gurgaon – 122002 • +1.347.284.6413 (Mobile) • +91-9876667711 (Mobile) • Email: j.talwar@ttconsultants.com • Other Offices • Tainan, Taiwan (Branch Office) • Room 410, Technology Transfer & Business Incubation Center, National Cheng Kung University, No. 1 University Road, Tainan City 701 • Hsinchu, Taiwan • Si-Soft Research Center, 1A2, Lising 1st Road, • Hsinchu City • Washington, DC (Sales & Marketing Office) • 1701, Pennsylvania Avenue, NW, Washington DC. 20006 • +1- (202)-370-6471 • Visit: http://ttconsultants.com/ TT Consultants Pvt. Ltd