Why do a patentability search?

The purpose of a patentability search is to find out if your invention may be patentable by searching relevant prior art. A patentability search does not consider infringement, so a patentable invention is not necessarily safe from infringement. If you’re concerned about infringement, consider a freedom-to-operate (FTO) search.

The main questions answered by an effective patentability search are:

  1. Should I file a utility non-provisional patent application?

    Filing a non-provisional patent application requires significantly more money than filing a provisional. Moreover, the initial filing is the just the beginning of a typically long protracted process of back-and-forth arguments/amendments with the patent examiner. A patentability search helps guide the decision of whether to invest your financial resources to pursue a utility patent that may take years and tens of thousands of dollars.

  2. If so, how broad should my independent claims be in the initial filing?

    If the search outcome is favorable, the prior art found in the search will provide a helpful roadmap for drafting claims, especially the independent claims. For example, suppose your invention has three core features: A, B and C. Accordingly, there could be at least four different ways to draft combinations of those features: 1) AB, 2) BC, 3) AC and 4) ABC.

    If the search uncovered prior art that disclosed AB, for example, then you would not want to pursue a claim on AB alone.

What kinds of prior art are searched?

A cost-effective patentability search would likely focus only on patent literature because that is what patent examiners primarily search. While it may be possible to broaden the search to existing products and any relevant non-patent information on the Internet, the additional cost may provide diminishing marginal returns.

Patentability searches conducted by our firm are limited to US patents and patent applications.

Novel and Non-obvious

Patentability searches are more effective at identifying novelty than non-obviousness because novelty is an objective black-and-white issue. In the above example, it would be fairly straightforward to determine if a single prior art reference disclosed all three features. The absence of such a patent filing would indicate that the invention may be novel.

However, suppose that the search uncovered a first patent showing AB and a second patent showing C. The question then becomes whether it would be obvious to combine the two prior art patents to arrive at your invention of ABC. No one other than the particular examiner assigned to your application can answer this question definitively. So, a patentability search cannot provide assurances, but may lead to relevant information on the issue of obviousness.

How likely will the patent examiner uncover prior art not found in my search?

It is not uncommon for examiners to locate prior art references that were not found in a prior patentability search. Not only can experienced examiners find obscure prior art, they may also apply prior art references outside the field of your invention.

Keep in mind that patentability searches are not guarantees. The question of “Is my invention patentable?” will seldom be completely answered by a patentability search. Tempered with realistic expectations, a patentability search can provide a highly practical and useful benefit.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.