Patent Search, Patent Searching, Patentability Search

Patentability Search

A patentability search is performed to check whether an invention is

  • Patentable subject matter,
  • New,
  • non-obvious, and
  • Useful

Do you know if anyone anywhere publicly disclose the identical inventive concept prior to its critical date - it can invalidate the patent? The cost of preparing, filing, and prosecuting a patent application is substantial and is much greater than the cost of a patentability search. One study suggests that conducting a patentability search improves the chances of receiving a patent. It identifies any patent or non-patent literature existing prior to the invention at hand.

A patentability search will usually include a search in major patent collections, normally encompassing at least the United States (US), European (EP), Patent Cooperation Treaty (WO/PCT), Chinese, German, Korean & Japanese patent collections. Most patent examiners from major patent offices will go straight to these collections.

Key benefits of this search:

  • Helps the patent drafter to write a patent application that better defines the inventive contribution of the new solution over the prior art. The prior art search results assist the patent attorney or patent agent in writing a patent application and to draw up the broadest possible set of claims.
  • Speed up prosecution by pre-empting examiner rejections, and
  • Improve the defensibility of the future patent by ensuring that the Examiner considers the most relevant prior art during prosecution.

Patentability search is a precise science due to the complexities and non-uniformity of the patents system. On-line resources or inefficient search may give you temporary happiness; but for knock-out results rely on experienced & professional patentability search report only.

The cost of preparing, filing, and prosecuting a patent application is substantial and is much greater than the cost of a patentability search. One study suggests that conducting a patentability search improves the chances of receiving a patent.

The U.S. Patent and Trademark Office (USPTO) recommends that a patentability search be conducted:

"A search of all previous public disclosures (prior art) including, but not limited to, previously patented inventions in the U.S. should be conducted to determine if your invention has been publicly disclosed and thus is not patentable. While a search of the prior art before the filing of an application is not required, it is advisable to do so." USPTO on conducting a prior art search.

The European Patent Office (EPO) agrees that an inventor should obtain a prior art search:

"Where do inventors go wrong?

When it comes to prior art searching, many inventors simply scratch the surface. By far the most common mistake they make is to assume that their idea is novel, when a simple patent search would tell them that it was not. They then make things worse by spending often large sums of money on an idea that is extremely unlikely to be commercially successful." EPO on conducting a prior art search.