Patentability Search: The Patent Application Series

In this ‘Patent Application Series,’ I’ll be discussing the patentability search.  I’ll explain what it is, what to know before investing, and why it is an important step in the patent application process.

What a Patentability Search is:

The patentability search, or novelty search, as the names imply, are searches performed with the intent to determine if an idea is able to be patented based on whether it is novel. One of the key factors in determining if an idea is patentable is if it is novel.  The patentability search can be attempted by an individual inventor, but a formal search is conducted by a patent attorney, patent agent, or a person who specializes solely in patentability searches.

To conduct a patentability search, an experienced professional uses specialized tools and databases to compare information about an idea to the millions of published and patented applications in the database of the United States Patent and Trademark Office (USPTO). Part of this process is analyzing potentially hundreds of patent documents for similarities that relate to the invention in question.  Performing a quality search takes a great amount of experience and a familiarity with the intricacies of the field.

What to Know Before Investing:

An inventor should personally conduct a search of online resources before even engaging a law firm to assist in protecting an idea.  It would be risky for an inventor to rely solely on their own search results as  confirmation to proceed with investing in a patent.  Instead, an inventor is encouraged to use their individual search as a starting point.  With an individual search, an inventor not only becomes more familiar with the market, but also begins to build a base of knowledge for explaining the unique and patentable aspects of the invention.

It is not unusual for a search performed by an inventor to turn up empty.  This may seem encouraging and some have filed for patents based on a limited search, only to have their patent rejected by the USPTO.  It should be noted that even if a product is not for sale, it does not mean it is not already patented.  There are many different reasons for why a patent does not make it to market, but it is not uncommon.

Another pitfall faced by inventors is the temptation to invest in a low-quality patentability search.  It is important to identify what you will get from the search before investing.  Low-quality searches often produce a list of hundreds of patents that may or may not be relevant. They will not include an explanation of the findings either.  This makes it difficult for the search to be of any use.

A search conducted by a patent attorney should include a patentability opinion. This is the attorney’s personal opinion reached by analyzing the results of their search.  The opinion will also explain the search results.  Without the patentability opinion that accompanies a professionally conducted search, the patentability search is difficult to interpret.  A low-quality search may be cheaper initially, but could cost more in the long run if it leads you to invest without truly understanding the market.

Why a Patentability Search is Important:

A quality patentability search is an investment.  The primary goal of the patentability search is to help determine whether an idea can likely be patented.  If the search concludes that the invention is not novel and is not likely to be patented, then years of time and thousands of dollars are saved by not pursuing a doomed patent.

Even if an idea is found to be novel, a patentability search conducted by an experienced professional should always conclude with a list of patents that are relevant in at least some respects.  If the search concludes that the invention is not patentable as a whole, it is still possible that a Patent Attorney could be able to help you narrow the scope of an idea in order to pursue an idea that is a patentable improvement over the current technology.  By focusing the subject matter of a patent before it is filed, time and money are not lost to the Patent Office during patent prosecution.

Conducting a patentability search and proving a patentability opinion is not a guarantee that the idea will be patented. It is impossible to retrieve every patent application related to your idea, as many patents are not available to the public until they are issued.  What the patentability search and opinion does provide is the ability to invest with greater confidence.

Don’t leave a matter as important as your intellectual property to an online search.  Willing help in the form of an experienced legal team is here and is just a call away.  Please contact us if you are interested in a patentability or other search.