From Research To Revenue: Module 3: Preparation of Patent Search & Analysis Report
From Research To Revenue: Module 3: Preparation of Patent Search & Analysis Report
From Research To Revenue: Module 3: Preparation of Patent Search & Analysis Report
Module 3: Preparation of
Patent Search & Analysis Report
manish.rachchh@gtu.edu.in ipr_projectofficer@gtu.edu.in
Patent search in most systems of patent law constitutes all information that has been made
available to the public in any form before a given date that might be relevant to a patent’s claims
of originality. Patent search is the process by which prior inventions or ideas are examined, with
the goal being to find information that bears close similarity to a given patent or proposed
invention.
The documents searched during a patent search may include granted Indian, U.S. and foreign
patents, published patent applications, and non-patent literature, such as the Web, product
literature, and scientific journals and databases.
Once the Patent Search has been done and you have identified few related patent documents,
then the question of its interpretation and analysis will come.
Patent Analysis report is the process through which you can summarize the relevant patents in
brief, concise and precise way and can able to understand the area of protection covered by such
patents. Once said analysis is over for 10 to 15 relevant patents, then from that you can able to
get very clear cut idea that in your interested field of technology, how much work has been done
so far and still how much “White space”/ “Blank space” is available to work upon from your
side. This will make your IDP/UDP/Dissertation project unique itself.
• An inventor (like you) can make sure that your invention is unique before you spend time
and money to work upon some IDP/UDP/Dissertation topics (this would be a Novelty
search).
• A patent examiner at Patent Office carries out Patent search to check the relevant prior
art, if any existed, and cite them on his First Examination Report (FER) to be sent to the
applicant. Depending on the similarity between the prior-art cited and accused
application, the Controller may reject the patent application for further proceedings or
allow it with some amendments. (this would be Novelty Search)
• A company would like to produce a product, and although they do not wish to patent the
product themselves, they want to make sure that they do not get sued by someone else
that might have already patented the idea (this would be an Infringement search).
• Company A is making a product, and is being sued by Company B, which believes it
holds a patent on the product, and Company A would like to prove that Company B’s
patent is invalid (this would be a Validity search).
• A researcher would like a comprehensive listing of the most recent patents in a certain
field, to help guide his research (this would be a State-of-the-Art search).
There are many open source Patent database are available. The list of which is given in Module-
2 (page no.15). Out of these use two important open source databases which includes….
Regarding how to do the search using above mentioned two databases, you can refer material of
Module-2- Patent Search Methodology available at:
http://www.gtu.ac.in/circulars/13Aug/Module%202-
Patent%20Search%20Methodology__3rdAug2013.pdf
After searching, down load at least 10 (Ten) patent documents from EPO / IPO database, which
you feels more relevant to your IDP/UDP/Dissertation topics.
After down loading 10 complete patent documents from EPO / IPO database, understand the
content / embodiment of Patent document as given under Point no. 4 and thereafter start
preparing Patent analysis report as per format given under next Point no. 5.
Patent Search of Indian patents can be possible using Indian Patent office database (available
free online) by using any of above mentioned field.
Most of the major Patent Offices of the world, viz. USPTO, EPO, WIPO etc. are publishing full
text patent articles, in which each above mentioned searchable-fields as well as non-searchable
fields can be searched online.
• Bibliographic page
• Form 1
• Form 2
BIBLIOGRAPHIC PAGE
SAMPLE FORMAT
Sr.
Question Answer
No.
Part 1: Patent Search Technique Used
Select any one from 1. Indian Patent Office database, 2.
1 Patent Search Database used* Espacenet (worldwide), and 3. Other (in case of other give
details in next provided text book).
10 Date of Filing/Application* Mention the date on which application for patent is made.
Name of
City of Country of
Applicant/ Address of Applicant*
Applicant Applicant
Assignee*
17 Give details of one or more applicant/assignee who has made an application for patent, and who owns
the rights of patent.
Limitation of Prior Give details about, what are the problems associated with
19 Technology/Art* previous available technologies.
24 Number of claims* Give the number, How many claims are there in patent.
Ans: Student has to give details of patent database from which they got a particular patent,
and by studying this patent they have to generate a Patent Search & Analysis Report.
Students can select any one from given drop down menu, in case if you have selected
“other” than you have to give details about to it.
Ans: Student has to identify keywords related to their respective IDP/UDP definition, and
mention those keywords, which they have entered into patent database to get related
patents. Students have to give at least 3 keywords.
Ans: Search string is the combination of key words along with Boolean operators like AND,
OR, NOT used for getting the related results/hits. Students have to give details about
which search string they have used to get patents related to their respective IDP/UDP.
(e.g. If one wants to search patents related to control speed of bike/car. Then he may use
search string like - Control AND Overspeed AND Automobile)
Ans: Here students have to give number of related patents comes after using above search
string into patent database search engine.
Ans: Here students have to give details about the category/field of Invention. Brach of
technology with which patent is related. For example: whether it is associated with
Mechanical, Civil, Automobile, Computer etc. branch.
Ans: Give detail about patent is related with which class of a particular branch of technology.
For example – For automobile related patents, Patent is related with steering, break,
suspension, light system etc. Here students have to give final subject area of each
patent.
Ans: Here students have to mention exact title of patent as seen on each patent document.
Ans: Here student have to take care that application no. and patent no. for each patent are
different. So understand the difference between them and exactly provide the
application no of each patent. Application Number is the number given by patent
office at the time of receipt of application for patent, while the Patent Number is the
number given when the patent is granted after fulfilling all the requirements of patent
office.
Ans: Patent is granted after around 2-5 years of making an application for patent, after
checking novelty feature and all other requirements by patent office. So in this question
mention the patent number.
Ans: Filing Date is the date on which application for the patent is made to respective patent
office.
Ans: Priority date is the first date on which application for the patent is made. Where an
application for patent in India (or any other country) is based on a previously filed
patent application in any other country, the priority date of that patent shall be the date
of the previously filed application in which the invention was first disclosed.
Ans: After the application for patent is made, details about the patent application are
published in Patent office Journal of respective country. In this question students have
to mention the Publication No./Journal No./Bulletin No. etc in which application for
patent is published.
Ans: For each patent, the publication date is the date on which particular issue of Patent
Office Journal containing details of specific patent application is published.
Ans: Patent gives territorial rights. So if inventor wants a patent protection in more than one
country than he has to file patent application in different countries separately for the
same invention. So the country in which applicant has filled first application is called
First Filled Country.
15: What is meant by Also published as (Name of Countries where patent filled & relevant
Patent (application) No)?
Ans: As said in answer of question 14, if inventor wants a patent protection for his invention
in more than one country than he has to file patent application in different countries
separately. So in answer of this question students have to give details about in which
countries application for the same invention is made, and the application number for
each such application. Were no data is available just answer it as Not Applicable.
Ans: Inventor/s is the one who has developed this invention. So here students have to give
name/s of Inventor/s of each patent. Also give other details like: Address, City &
Country of Inventor/s.
17: What is meant by Name of Applicant/ Assignee and other details of Applicant/
Assignee?
Ans: Applicant/ Assignee are the one who owns the rights of Patent. It is possible that the
inventor and the applicant for the patent are two different persons/entities. It is
particularly true for Patents developed by any legal entities (such as organisation,
company, colleges or universities). So in such cases students have to give name of such
applicant for the patent. In case where the inventor and applicant for patent both are the
same than give name of applicant/s here for one more time. Also give other details like:
Address, City & Country of Applicant/ Assignee.
Ans: To answer this question, Students have to select any one from individual or organisation
given under dropdown menu, as explained under answer of question of 17.
Students can answer the following questions after thoroughly reading patent document.
Ans: Prior art constitutes all information that is available to the public in any form before a
given date (i.e before the date of patent application). In answer of this question students
have to mention details about Limitations or problems associated with
technologies/product available before the patented article for which application for
patent is made.
Ans: Here students have to add a note on each technical detail associated with invention,
describe all aspects of Invention in full. Describe all the figures; give the examples
mentioned under patent document. In this part students have to give all details of
Invention.
Ans: Here students have to give details about what things he/she has learnt about particular
technical field after reading a patent.
Ans: Here students have to give details about what they have understood after reading a
patent document. What is the invention about? What are problems with present
available technology? What are benefits with this invention? Etc. Students have to
make summary of each patent in not more than 500 words.
Ans: Here students just have to mention the number of claims under each patent they have
studied.
Ans: Here students have to answer this question by selecting any one option from: Published
Application/ Granted Patent/ In-force Patent/ Failed to maintain the Patent/Expired
Patent. Students can get answer about this question by checking its status and by seeing
its renewal fees payment history.
26: What is meant by how much this invention is related with your IDP/UDP?
Ans: Here student have to select any one option from > 91 %, 71 to 90%, < 70 %, Not
related to IDP/UDP in relation to the closeness of subject matter between studied patent
and the subject matter of everyone’s IDP/UDP.
27: What is the meaning of - Do you have any idea to do anything around the said invention
to improve it?
Ans: After studying each patent thoroughly and by answering all the previous questions, each
student has to answer this question very carefully and give your valuable ideas in a very
precise manner. Here students have to think for any possible modification/improvement
in the studied patent he/she can make so as to maximise its effectiveness/user
friendliness. Students have to give idea about possible alterations they can make in
briefly about 500 words.
• A sample Patent Search and Analysis Report is generated by studying a TATA’s patent on
“A DEVICE FOR CONTROLLING OVERSPEEDING OF AUTOMOBILES”.
• The hyperlink for the original patent and associated data is available at:
http://ipindiaservices.gov.in/patentsearch/GrantedSearch/ReportProjectPopUp.aspx?Appl_No=203
1/MUM/2006&Pbl_No=2031/MUM/2006&Pat_No=227873
• The tips on : How to access patent databases, Different parts of patent database and How to
interpret original patent document to generate Patent Search and Analysis Report – can be
found in a downloadable PDF file “Compendium of Module 3- Interpretation of Patent
documents from different databases” available on online project tracking portal.
Sr.
Question Answer
No.
Part 1: Patent Search Technique Used
1. Automobile
2. Speeding
3. Control
2 Keywords Used for Search* 4. Carbureted engine
5. Device
6. In case of more than Five Keywords :
Not Applicable
3 Search String Used* Control AND Speed AND Automobile
Objectives of
Sr. Limitations of
Patent number Title of Patent Patented
No. prior art
Invention
1.
2.
3.
4.
5.
Looking at the objectives of above 10 Patents, can you think about any new solutions
for next level of improvement/development of technology? (Write at max. in 500
words)*
OTHER DATABASES: