Why do a patentability search?

Before investing in an expensive utility patent application, a patentability search can address the question of whether or not your invention/idea/concept/product is patentable. Notice that I did not say that such a novelty search would “answer” the patentability question since no one can guarantee what a patent examiner would do. The purpose of a patentability search is to find relevant prior art and to analyze those search results to make an informed decision on whether to proceed with patenting. Before investing in a novelty search, try searching on Google patents to see if you can find anything highly similar.

Keep in mind that a novelty 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 nonprovisional 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 patentability 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.

Is a patentability search the same as an freedom-to-operate (FTO) search?

No, a patentability search does not provide any guidance on whether your product might infringe other patents. Just because you have a patentable product does not mean it would be free and clear of infringement risks. It’s very possible to get a patent, and still have a patented product that would infringe on other patents. It helps to know the difference between patentable and infringing.

What is the cost of a patentability search?

My firm charges a flat rate of $1,500 per invention to conduct a novelty search.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com