Importance of patent data and challenges in accessing Indian patent data by EU applicants

Hana Onderkova

Head of IP - European Business & Technology Centre

Background

Traditionally, patent databases were used for mainly two reasons: conducting prior art searches to determine the novelty of any invention prior to filing a patent application, and to conduct freedom-to-operate (FTO) studies, i.e. determining whether a specific technology is protected in a given territory, and therefore cannot be used by third parties without the IP owner’s consent.

Patent applicants can conduct their prior art searches by using tools namely Espacenet provided by the European Patent Office (EPO) and PATENTSCOPE provided by the World Intellectual Property Organisation (WIPO).  These tools allow the patent applicants to search millions of patent documents, including their file history and translations. In addition to these free of charge tools, some private platforms permit the retrieving and processing of patent information. Because these patent databases have access to the patent data published by the IP offices around the world, it does not matter in which jurisdiction the patent applicant is, be it the EU or India because novelty of an invention is evaluated on available information worldwide, and not only in the territory in which patent registration is sought.

Moreover, the patent data do not only indicate the state of art of a particular technology but also disclose the legal status of the patents in the respective jurisdictions which is an essential information to conduct the FTO studies. The FTO study essentially assesses whether a certain technology or product is protected by one or more IP rights in any particular jurisdiction and gives insight whether the EU businesses would potentially infringe on someone else’s IP rights should it start using a specific technology.  FTO studies are an essential tool in internationalisation especially if the EU SME is bringing seemingly new technology to a market such as India.  

Going beyond prior art search and freedom-to-operate (FTO)

However, the use of patent data goes beyond prior art searches and FTOs as they are also very convenient sources of information that can be used for the purpose of obtaining business intelligence. Through targeted data analysis commonly known as “patent landscapes”, businesses can discover information such as how many competitors are innovating in the same technology domain, or which areas of technology are more ‘overcrowded’ when it comes to patent filings. Landscape studies can also indicate “white spaces” in patent filings or lack of competition in some technology areas hence outlining opportunities to direct one’s own R&D into these spaces. The patent data analysis can also highlight which countries and technology domains have the most patent filings as well as the recent filing trends in the particular technology field, or jurisdiction.  

Having said all that, one can indeed ponder how the EU applicants can access Indian patent data to evaluate their technology, conduct due diligence and assess their competitors especially when entering or planning to enter Indian market.

Indian Patent data and challenges to retrieve them

Over the years, all Indian patent data have been digitalised and made accessible via the Indian Patent Office’s (IPO) digital portal called inPASS which provides not only patent specification but also complete file wrappers including all forms, translations, letters from the IPO and amendments (if any) for every patent application. However, inPASS does not provide access to worldwide data and does not allow downloading bulk search results for further data processing.

Paid patent databases on the other hand include Indian and worldwide patent data, and have various diagnotic and landscaping tools however, these platforms come with a cost and hence might not be the first choice for SMEs which are getting into the IPR space. 

Way forward

The patent applicants can combine all three tools namely Espacenet, PatentScope and inPASS or suscribe to paid databases to evaluate the novelty of their invention or obtain holistic overview of the overall patent filing trends in India or their competitors and their activity in the market.

If EU businesses do not want to subscribe to paid patent databases, they can adopt the strategy of smart outsourcing. In other words, they can decide which information such as basic novelty searches can be obtained in-house even though that might require increased effort by their employees and which complex tasks such as conducing FTOs and landscape studies can be outsourced to the patent information service providers.