NoveltyPatentability Search What is a Novelty Search A

Novelty/Patentability Search

What is a Novelty Search? • A novelty (patentability) search is performed to reveal prior art that can affect the patenting of an invention Why perform a novelty search? • To help with the decision of applying for a patent which requires time and money • To help with drafting the patent application Points to remember: • Consider both patents and publications as prior art • Search all publicly accessible information 2

Value of Novelty Searches • • Hypothesis: A patent has a higher chance of grant if a comprehensive pre-filing search is performed Dataset and Assumptions: • • Sample of 3000 randomly selected patent applications filed in December 2004 and January 2005 was analyzed. The applications with IDS indicate novelty search was performed Conclusion • Highest percentage of patented cases for applications where novelty search was performed, highest percentage of abandoned cases when search not performed Data Source 3

Dolcera Novelty Search Process Understand the invention Search in multiple databases Dolcera Objective: Ensure comprehensive coverage at an affordable price point Generate report 4

Step 1: - Understand the Invention • Understand latest technology related to the invention from web searches, scientific literature, Wikipedia etc • Identify Novelty, Problem/Solution from the invention disclosure document • Understand “elements of the invention” that need to be protected and design searches accordingly 5

Step 2: - Search in Multiple Databases • Identify keywords, IPC, US, and CPC codes. Run a comprehensive search comprising the following steps: • Google prior-art search • Use Google ‘prior-art search tool’ to identify both patent and non-patent priorart data • Keyword based patent search • Run keyword searches in different patent databases such as Google Patents, Micropat, SIP and Thomson Innovation • Class based patent search • Combine identified classifications with broad keywords to identify relevant prior-art • Non-patent literature search • Use keywords and citations to identify relevant prior-art from Google Scholar, IEEE search, Scirus 6

Step 3 : - Generate Report • Map the elements of the invention individually to the prior art results, and provide claim numbers/line numbers/section numbers for ease of reference • Map figures from the invention against figures from prior art if feasible • Create an element comparison chart as shown below Elements of the invention Related/relevant context from prior art Element 1 Paragraph from prior art Element 2 Similar figure from prior art Element …… …………………. • Publishing Format: • Publish entire report on an interactive wiki page • Publish a printable format of the wiki and annotated PDF of relevant prior art (if required) 7

Example - Novelty Search 8

Step 1: Understand the Invention • Consider an invention for “Automated web-based targeted advertising with quotas” • The following problem/solution is proposed: • Problem: - There are limited opportunities for targeted advertising on websites since advertisers specify ad quotas for the number of times their ads should be displayed. • Solution/Novelty: - The present invention determines where to place advertisements to maximize an expected utility such as click through rates while operating within the constraint of quotas. The novel idea proposed includes a broad definition of utility, including measures of sales, profits, or brand awareness etc. to allow advertisements to be allocated in accordance with the actual interests of advertisers. • Some elements of the invention are: • Selecting group of sites for displaying advertisements to maximize utility • Utility includes measures of sales, profits, brand awareness etc • Meet ad quotas specified by the advertisers while maximizing utility 9

Step 2. 1: Build Concept Table (Keywords) 10

Step 2. 2: Determine Class Codes 11

Step 2: - Search in Databases Google Scholar Search 12

Step 2: - Search in Databases Micropat Search Example 13

Step 3: - Generate Report Bibliographic table for patents with hyperlinks Bibliographic table for scientific literature with hyperlinks 14

Step 3: - Generate Report Sample Element Mapping for Patents/Scientific Literature 15

Convenient Report Format Main Report: Interactive media wiki page Additional annotated PDF’s for ease of reference 16

Dolcera Proposition: Assured Quality and Affordable Pricing Better than Landon IP & Cardinal IP on Quality Benchmarks Quality Assurance: Multiple Databases + Mapping and Analysis of Prior Art + Foreign Keywords (if required) + Convenient Reporting Format Quick Turnaround 10 Years of experience Hundreds of searches for top companies across the world every month! Competitive Pricing and Discounts. Option for Bulk Pricing. Try us out for quality before you decide! Order a free trial search! 17

Thank You 18