Why Perform a Patentability Search before Filing Your Patent Application?

Patentability searches can be useful to get a better idea of whether an invention can be patented. A good search may prevent the cost of a wasted patent application on an already-invented and published invention, but can also be useful in drafting the application for a novel invention that may be patentable. 

What is a patentability search?

A patentability search is conducted before the filing of a patent application to determine if an invention might be patentable. Patents are granted to useful innovations that are novel and non-obvious in light of the prior art. The patent law states that prior art may include previous patents, patent applications, printed publications, or anything that is publicly available.  

Patentability searches generally focus on previous patents and patent applications, since they are the most common type of prior art for which patent examiners search. Non-patent literature may be searched as well. 

It is relatively straightforward to determine novelty after a search is performed, as a searcher needs only to determine if any single reference discloses all the elements of the invention. Determining obviousness, however, may be more complicated. An invention is generally not patentable if it would be obvious for a person having ordinary skill in the art to combine two different sources to arrive at the invention. Even though obviousness may be difficult to determine, experienced patent attorneys may be able to accurately ascertain obviousness.

A patentability search may differ from other types of prior art searches, such as an invalidity search. An invalidity search is similar to a patentability search but is used for determining the validity of issued patents. It is generally conducted on competitor’s patents to determine their validity. 

Another type of search is a clearance or a “freedom-to-operate” (FTO) search. This type of search is performed to determine if a particular product or service might infringe on any issued patents. An important distinction arises here since it is possible to have a patentable invention while still infringing on other patents. Therefore, while some overlap may exist between a patentability search and an FTO search, it may be worthwhile for a potential patent owner to do both to understand the market and potential infringement issues. 

When to Obtain a Patentability Search

While a patentability search may seem like a costly and perhaps unnecessary step in obtaining a patent, it can be very useful to avoid wasteful applications and to improve pursued applications. 

Many large companies have engineers who are very aware of the competition and the state of the art. In these cases, a patentability search may not be worthwhile. Smaller entities, or those who are entering a new market, may not have a complete understanding of the technological landscape. In these cases, it is probably worthwhile to spend the money upfront to have a patentability search performed. 

If the results of the search are negative, then the inventor can save the cost of preparing and filing a patent application. On the other hand, if the results are positive, and the invention appears to be patentable, the funds spent on the search were not spent in vain, but may serve to improve the pursued patent application. 

With around 600,000 patent applications filed each year in the United States alone, it is not uncommon for an invention to have features similar to other previously filed applications. It can be very helpful for a drafting attorney to know and understand the prior art, so the patent can be drafted to focus on the unique and innovative features of the invention, and to avoid areas that are disclosed in the prior art. Therefore, the resulting patent is strengthened against future validity attacks. 

Problems with Patentability Searches

It should be noted that patentability searches are not infallible and do not guarantee that a patent will be granted. For example, one limitation of searches is that foreign prior art may be difficult and expensive to search. Another example is that even though patent applications are not published for 18 months, they are still considered prior art as of the filing date. So, if an unpublished application anticipates the searched-for invention, the search will not produce an accurate conclusion of patentability. Finally, the attorney and applicant must disclose the prior art found in the search to the patent office in the application. This, however, will strengthen the patent against future validity attacks if the patent is granted in spite of the disclosed prior art. 

Can You Do the Search Yourself?

Many inventors assume that they can do the search themselves, and while it is possible, we recommend that a patent attorney conduct and/or review the search. Searching and understanding patents is the domain of patent attorneys and they understand the nuances involved in whether something is patentable or not. The failure to properly conduct and understand the results of a search may discourage an inventor who has a patentable invention but wrongly believes there is disqualifying prior art. Or, it may encourage an inventor who incorrectly believes that their invention is patentable but in fact is not, which leads to wasted time and money. 

The qualified intellectual property attorneys at TraskBritt are adept at handling patentability searches. If you have an idea but are not sure if it is patentable, contact the firm to schedule a consultation. 


Author: K. Russell Griggs