Patentability Search

Determining the patentability of an invention at the outset helps inform the decision whether to pursue a patent and may save time, energy, and a lot of money.

A patentability search is the process of gathering the relevant information needed to evaluate the likelihood of receiving a patent. This article serves as a resource for inventors to understand patentability searching.

Requirements for a Patent

To qualify for patent protection, an invention must meet the following requirements.

• Subject Matter Eligibility: The invention must be either a process, machine, manufacture, or composition of matter.
• Novelty: The invention must be new and never have been made before.
• Nonobvious: The invention must not just be an obvious improvement of something that already exists.
• Useful: The invention must be useful or have some utility.

A patentability search helps evaluate the novelty and nonobvious requirements of the invention by uncovering relevant prior art.

What Is Prior Art?

Prior art is any information that is publicly available before the filing date of the patent application which shows aspects of the invention that already exists. Typical forms of prior art that the USPTO cite when rejecting patent applications include:

• Patents: Granted patents from any country.
• Patent applications: Including pending patent applications.
• Scientific publications: Articles, journals, and research papers.
• Books, manuals, any published materials: Anything on the internet.
• Products and devices: Existing products embodying similar technologies.

Inventions must exhibit “novelty” and be “nonobvious” to qualify for patent protection. Patent examiners look at the prior art to determine if the invention is novel and nonobvious.

What Is a Patentability Search?

A patentability search is a search to identify relevant prior art. The prior art is examined and used to evaluate if the invention is patentable before applying for a patent. A patentability search is typically done by a patent search professional and is accompanied by a patentability report. This report provides an expert opinion on whether the professional believes the invention is patentable.

Why Conduct a Patentability Search?

Patent examiners spend a lot of time researching relevant prior art for each patent application they examine. Examiners will reject applications when the prior art indicates the invention is not novel, or merely an obvious combination of the prior art.

Conducting a patentability search beforehand will arm you with the relevant information you need to successfully prosecute the application. A patentability search provides inventors with information allowing them to:

• Assess novelty and obviousness: By understanding the existing technology, you can gauge your invention’s uniqueness and its chances of securing patent protection.
• Identify potential challenges: Early awareness of similar solutions allows you to address them during development, potentially strengthening your invention’s competitive edge.
• Strengthen your patent application: By citing relevant prior art and highlighting your invention’s distinct features, you present a more compelling case to the USPTO.
• Gain valuable insights: Prior art research offers a glimpse into the competitive landscape, revealing potential competitors, industry trends, and opportunities for further innovation.

A patentability search is an investment in your invention’s success. It provides valuable knowledge, empowers informed decision-making, and increases your chances of securing and exploiting a strong patent.

When to Conduct a Patentability Search

Inventors know that research is required at every step of the inventive process. A patentability search should occur before filing a patent application. Here are key points to consider:

• Early-stage brainstorm: During initial ideation, a preliminary search can help refine your concept and ensure you’re not reinventing the wheel.
• Development phase: As your invention takes shape, regular searches help identify potential roadblocks and opportunities for differentiation.
• Before filing a patent application: A thorough search conducted close to filing ensures your application addresses relevant prior art and maximizes its chance of success.
• Ongoing searches: The patent world is dynamic. Consider periodic searches even after obtaining a patent to stay updated on relevant developments.

Remember, the more informed you are about the existing technology, the better equipped you are to navigate the patent process and maximize your inventions potential.

How to Conduct a Patentability Search

There are many ways to approach conducting a patentability search. However, the USPTO recommends the following multi-step strategy for searching U.S. patents.

1. Brainstorm terms describing your invention. Try to think of alternative words to describe your concept. For example, an umbrella could also be called a parasol or a sunshade.
2. Conduct a keyword search using Patent Public Search. You can begin with a broad search for your main concept, and then narrow the search results by adding additional features of your invention. Review the front pages of patents and published patent applications, eliminating those that are irrelevant. Guidance on how to search is available in the Quick Reference Guides.
3. Conduct an in-depth review of the documents found by your search. Review in detail the complete patents and published patent applications you find that are similar to your invention. Don’t forget to review the drawings, specification and claims for similarities to your invention.
4. Expand the search with relevant CPC classifications. Go to the Classification Resources page and select the CPC classification system. Find a relevant classification and use it in a classification search in Patent Public Search’s Advanced Search with the .CPC. field code.
5. Review cited references. The front page of a patent includes a section of cited references provided by the applicant and/or the patent examiner. Review the U.S. patents and published patent applications that a patent has cited and/or the patents that have cited them since their publication. Patent Public Search can provide a search of both the backward and forward citations.
6. Broaden your search with foreign patents, non-patent literature and/or a patent professional’s search. Check Espacenet, the European Patent Office’s worldwide patent publication database of over 140 million patent publications. Also search books, journals, websites, technical catalogs, and conference proceedings in the applicable field. You may want to hire a registered patent attorney or patent agent to review the search.

Plan on spending hours learning the search process, searching, and evaluating results. The length of time spent on your search depends on the complexity of the invention. It is important to carefully record the details of your search process, such as the databases you used, the date and time of your search, the keywords you searched, and which patents/published patent applications were retrieved.

Professional Patentability Searches

While free resources offer a valuable starting point, complex inventions, high-value patents, and time constraints often warrant the expertise of professional prior art search services. Here’s why considering professional assistance can be a strategic investment.

Expertise: Professional searchers possess extensive knowledge of patent databases, classification systems, and industry-specific nuances. They leverage advanced search tools and proprietary resources unavailable to the public, ensuring a comprehensive and in-depth analysis.

Tailored Strategies: Professionals tailor their approach to your invention’s unique characteristics and target markets. They delve deep into the relevant technology areas, considering not just patents but also non-patent literature, products, and industry knowledge.

Time-Saving Efficiency: Conducting a thorough prior art search can be time-consuming, especially for complex inventions. Professionals save you valuable time and effort by handling the search process efficiently, allowing you to focus on core development and business activities.

Expert Interpretation: Deciphering search results and assessing their impact on your invention’s patentability can be challenging. Professionals analyze the finding critically, highlighting key prior art, evaluating its novelty, and providing clear insights into potential challenges and opportunities.

Reduced Risk and Enhanced Defensibility: A meticulous professional search minimizes the risk of overlooking crucial prior art, potentially preventing future infringement issues and strengthening your patent applications defensibility.

Strategic Guidance: Beyond the search itself, experienced professionals offer valuable strategic guidance. They can advise on overcoming potential patentability hurdles, suggest modifications to your invention, and recommend next steps for maximizing your patent success.

Peace of Mind: Knowing your invention has undergone a rigorous professional search brings peace of mind and allows you to move forward with confidence, whether seeking investment, partnering with manufacturers, or licensing your technology.

The decision to engage professional search services requires careful consideration of your specific needs and resources. Professional expertise can provide an invaluable edge, increasing your chances of securing strong patent protection and maximizing your inventions potential.

It is best practice to discuss a patentability search with your patent attorney before making any major decisions related to patent prosecution. Your patent attorney may do the patentability search themselves, use a professional patent search company, or review a search that you have done.

Using AI to do a Patentability Search.

Generative AI is an extremely useful tool for inventors to utilize during the inventive and patenting process. As of writing this article, the current generative AI models can NOT act as a substitute for a search professional. However, the AI models can be helpful in directing your search. Try the following prompts in a generative AI model.

• Help me conduct a patentability search.
• What keywords should I use for a patentability search?
• What databases should I search to evaluate the patentability of my invention?
• What else should I consider when evaluating the patentability of my invention?

Keep in mind that AI models may provide false information and cannot (yet) replace a patent search professional.

Helpful Resources

• How to Conduct a Preliminary U.S. Patent Search video series
• Multi-Step U.S. Patent Search Strategy
• Patent Public Search
• Classification Resources
• Google Patents
• Espacenet