In this article, I will talk about some concepts that are essential for the patent process. I will try to focus on the basic concepts that should be essentially known in the process such as search and examination reports, patentability criteria, and the way the reports are produced and how they should be read.
The search report is a report prepared by technical persons, who have studied or worked in the technical field to which the subject of the invention is related, upon conducting a search which is known worldwide as “prior art search” and is based on “patent classifications” and “keywords” determined according to the field of the invention applied for. In order to obtain a patent, three basic criteria are sought in the invention according to the international literature: novelty, inventive step, and industrial applicability. To be able to evaluate whether these three criteria are met in an invention, it is necessary to scan all accessible documents in the technical field to which the invention is related. The said accessible documents refer to materials such as patent documents, brochures, articles, dissertations, all kinds of videos and photographs on the internet, which include the visual and technical features of the product or method that are the subject of the invention. As a matter of fact, it has become a very common practice to include YouTube links or social media links in the reports.
The search report is the first stage of this process. As a result of the search report, the closest documents related to the invention are found and some details are given about which parts of these documents are similar to the invention, and finally, taking into consideration the relevant parts of the relevant documents, an evaluation is made about whether the invention meets the criteria of novelty, inventive step and industrial applicability compared to the prior work (prior art). When making this evaluation, certain letters are used to symbolize the evaluations.
The example search report provided below is issued by the Turkish Patent and Trademark Office. The first part (A) of the report shows the classification code to which the invention is related, the second part (B) shows the keywords that are used in the search, and the last part (C) shows, by means of specific letters to indicate relevance, the similarity of the relevant documents found as a result of a search conducted based on the determined classifications and keywords.
The categories given in the last part are defined below.
Conducting category evaluation is the hardest part of a patent evaluation. In fact, there are various approaches for inventive step evaluation. Since I will discuss these approaches and the evaluation of their criteria in another article, I will not address these issues at the moment.
So far, I have tried to explain the basic logic of the search report. Let us get to the details of the search report. The examination report is a report that is prepared after the search report and has the quality of a final decision in terms of patentability. In this report, it is understood whether the defense made by means of the applicant’s additional defense and arguments about the similarities of the documents in the search report, the arguments presented, or the amendments made in the specification of the invention convinced the examiner. In other words, search reports are generally issued without additional technical explanations, whereas examination reports are issued together with a written opinion section in all countries, since they have the characteristics of a final report on patentability. The biggest and main difference between the two reports is that one initially identifies what is contained in the prior art while the other is the final report in terms of patentability.
In some countries, it is directly proceeded to the examination phase, while in some other countries, a search report is prepared first. In the European Patent Applications filed in accordance with the European Patent Convention, the process starts with the search, and since Turkey follows and complies with the European system in applications, it starts with the search phase.
Search and examination requests are mandatory processes and result in loss of rights if not made. In some countries, a patent system without examination is applied, which grants patents without examination in order to delay the examination phase. Türkiye fortunately abandoned this system with the Industrial Property Law, which came into force in 2017.
Although the sub-details of the aforementioned basic concepts will be discussed separately, I hope that knowing the most important conditions of obtaining a patent will be particularly useful in this long journey and will be beneficial in order to proceed more consciously.
To summarize, in order to be able to obtain a patent, it is necessary to invent products or production methods, which have not been implemented by someone else before or have not been disclosed to the public even if they are invented by the persons themselves; and which are not obtained by a method that can be easily thought of by combining the features of other available products, and are suitable for mass production. In order to figure out whether an invention meets these conditions, search and examination reports are used, and certification in this process is achieved as a result of convincing the examiners that the invention meets the said conditions