Patent Search & Prior Art Analysis

Prior art is any information that was publicly available anywhere in the world before the filing date of a patent application (or before the priority date, if one is claimed). Under Section 2(1)(l) of the Patents Act, 1970, an invention must not form part of the state of the art to be patentable. If the Indian Patent Office's examiner finds a prior art document that discloses all the essential features of the claimed invention, the application will be refused under Section 25 (pre-grant opposition) or Section 64 (revocation). A prior art search conducted before filing allows the applicant to identify and navigate these obstacles proactively.

A patent search is not legally mandatory under the Patents Act, 1970 before filing an application. However, the Indian Patent Office itself conducts a prior art search as part of the examination process, and the results directly determine whether the patent is granted. An inventor who files without conducting a prior art search risks wasting the filing fees, the prosecution timeline (which can span three to five years), and the opportunity cost of delayed market activity — only to receive a refusal based on prior art that was discoverable before filing. In practice, any professionally advised patent filing should be preceded by a thorough prior art search.

A trademark search checks whether a proposed brand name or logo is confusingly similar to an existing registered trademark in a specific class of goods or services. A patent search checks whether a technical invention is novel and non-obvious compared to all publicly available prior art globally. Trademark searches primarily query the trademark registries of the relevant jurisdictions. Patent searches require querying dozens of patent databases across multiple jurisdictions and non-patent literature sources using technical classification codes and keyword searches. The two searches serve entirely different intellectual property objectives and require different expertise.

Our searches cover all major patent databases: the Indian Patent Office InPASS and Speedata databases, the EPO's esp@cenet (covering 150+ million documents across 150 countries), the USPTO full-text database, the WIPO PatentScope database (covering PCT international and national phase applications), the China CNIPA database, Japan's J-PlatPat, and Korea's KIPRISPlus. Non-patent literature sources include Google Scholar, IEEE Xplore, PubMed (for biotechnology and pharmaceutical inventions), Scopus, and relevant standards bodies depending on the technology. The specific databases selected are tailored to the technology field and target jurisdictions.

A novelty search (also called a prior art search) asks whether an invention is new and inventive enough to be patented — it assesses patentability. A freedom-to-operate (FTO) search asks whether practising a particular product or process would infringe any currently in-force patent claims held by third parties — it assesses commercial risk. A novelty search looks at all prior art including expired patents; an FTO search focuses only on in-force patents in specific jurisdictions. Both are important: a novelty search should precede filing, while an FTO search should precede product launch or significant R&D investment.

A comprehensive prior art search and analysis report typically takes seven to fourteen business days from the date of receipt of a complete invention disclosure. Expedited searches are possible in urgent cases for an additional fee. The deliverables are: a written search methodology summary, a list of all databases and sources searched, a table of relevant prior art documents with full bibliographic citations and relevance ratings, a comparative analysis of the prior art against the proposed claims, a legal opinion on novelty and inventive step, and strategic recommendations for claim scope and filing strategy. The report is provided in PDF format with all cited prior art documents attached.

No. A prior art search is conducted based on the state of publicly available information at the time of the search and using reasonable professional expertise. It cannot guarantee that the examiner will not identify additional prior art during official examination, particularly art that is in languages other than those searched or in technical repositories not included in the search. The value of the search is in significantly reducing the risk of rejection and in informing better claim drafting — not in providing an absolute guarantee of grant. The Indian Patent Office's examination is independent and may identify documents not found in the pre-filing search.

The cost of a prior art search varies with the complexity of the technology, the number of jurisdictions to be covered, and the depth of non-patent literature searching required. There are no government fees payable for a private prior art search (as opposed to the official Patent Office request for examination fees). Professional fees are charged by the patent attorney or search firm conducting the analysis. We provide a quoted fee on review of your invention disclosure. As a benchmark, a comprehensive search for a mechanical or software invention typically involves fewer databases than a pharmaceutical or biotechnology invention where extensive non-patent literature is critical.

Yes, and the search is particularly important for software-related inventions because the patentability of software in India is restricted under Section 3(k) of the Patents Act, 1970, which excludes mathematical methods, business methods, computer programs per se, and algorithms. A prior art search for a software invention must assess both the novelty question (has this technical effect been achieved before?) and the patentability question (is the claim framed in a manner that avoids the Section 3(k) exclusion by claiming a technical process with a technical effect?). The search report for software inventions therefore also includes an opinion on claim drafting strategy to satisfy Section 3(k) requirements.