What is a Patentability Search and Opinion?

PatentSearchThis article provides reasons why you should have a patentability search performed and addresses common questions regarding patentability searching and resulting patentability opinions. A patentability  search is designed to tell you the likelihood of obtaining a patent on your invention. The law does not require that you do a patentability search search (also known as a patent novelty search) before filing a patent application, however often a search is the right first step in the patent process.

When a U.S. non-provisional patent application is properly filed, an Examiner at the Patent Office will perform a patent search on the invention as set forth in the claims of the patent application to determine whether you should be granted a patent. So why should you have a patentability search performed if the Patent Office will do one regardless? A patent search is almost always recommended so that you can avoid the cost of preparing, filing, and prosecuting a patent application on an invention for which a patent is not likely to be granted or for which the business value of the patent may be limited due to the prior art. The results of a patent search can also be used by a patent attorney to draft a stronger patent application on your idea.

Purpose of the Search
The purpose of a patentability search is to determine whether and which of the details of your invention are new. Patents are only granted for new inventions. If a prior patent or patent application discloses each and every detail of your invention then you will generally not be able to obtain a patent on that invention—because the invention is not novel (e.g. new). A search is therefore designed to give you information about whether you are likely to obtain a patent on your invention.

If the patentability search results show that you are not likely to obtain a patent on your invention because each and every detail of your invention is disclosed in a prior patent or patent application, then you can avoid spending money for preparing, filing, and prosecuting the application. In this way, you can think of a search as insurance against the risk of not obtaining a patent after spending money preparing, filing, and prosecuting a patent application.

If (a) not all details of your invention are found during the search or they not found in one prior art reference and (b) assuming the unfound details provide a patentable improvement over prior art, then the question will arise whether it would be worth pursuing a patent on those details that were not found during the search. This becomes a business question for you to decide. The patent search assists in determining the scope of patent protection you could obtain (e.g. what aspects or details of the invention could be protected and what aspects could not be protected). Aspects that the search reveals could not be protected could be copied by competitors. Therefore you are in a position to determine whether it makes business sense for you to pursue protection on the aspects of your invention that could be protected by a patent.

Patentability Searching vs. Patent Clearance Searching
A patentability search is different from a patent clearance search or a non-infringement search. Patent clearance searches and non-infringement searches are designed to address whether the commercialization of your idea would infringe any patent owned by someone else. A patentability search is not designed to address whether the commercialization of your idea will infringe any patent owned by another. The references to searching in this article refer to patentability searching and not patent clearance searches and or non-infringement searches.

My Product is Not on the Market, Do I Need to Search?
Generally, yes. The fact that your product is not available in the market does not necessarily mean you will be granted a patent on that product. The sale of a product in the market place may be one way of determining whether an idea is new. However, the publication of an idea in a patent or patent application is another way to determine whether an idea is new. There are countless patents and patent applications at the Patent Office that disclose products that are not currently on the market. So even if your product is not on the market, it may be disclosed in a patent or patent application at the patent office. Therefore, a search is recommended even when the product is nowhere to be found on the market.

Why would there be a patent or patent application on an idea, but that idea is not found in a product on the market? There are numerous reasons why a patented idea is not found in a product on the market, such as (1) the patent owner did not have access to sufficient capital to develop the product, (2) the owner could not gain access to retail space or appropriate channels of trade, or (3) the owner could not gain sufficient publicity or consumer interest in the product, etc. So while a patent can provide a competitive advantage, a patent is no guarantee of commercial success for the corresponding product.

Can I Do My Own Patent Search?
Yes, but just like many other do-it-your-self projects, a professional may achieve better results than you would on your first try. However, you may like to perform patent searching on your own because you may identify relevant prior art references, which if such references disclose all the features of your invention, would enable you to avoid the cost of hiring a professional patent searcher. However, before concluding your invention is not patentable based on the results of your search, you should consult a patent attorney for advice as to whether under the law you would be able to obtain patent protection even in light of the prior art references you found.

You can search at the U.S. Patent Office website. However, presently only patents going back to 1976 are word-searchable at the patent office website. All patents are searchable by patent class. You can also search through other search tools, such as Google Patents.

In any event, even if your search results do not reveal any obstacles to seeking a patent, it is best to engage a professional patent searcher, such as a patent attorney or trained patent searcher, to perform a search as a professional patent searcher may uncover results that you did not find given the professional searcher’s experience, access to search tools, and knowledge of searching techniques.

Need for Explanation of Patent Search Results
It is important to understand before requesting a patent search, what you will receive when the patent search is complete. Will you be given a patentabiliy search with a patent attorney’s opinion as to the chances of obtaining a patent on your idea along with an analysis of the results? Or will you only be given a pile of patents and patent applications with no analysis?

While sometimes the results of a patent search might be apparent from the patent references themselves, often it is necessary to have a patent attorney explain what the patent search results mean. For example, after reviewing the patents and patent applications from a patent search you might come to the conclusion that your idea is not patentable because it is obvious in view of the results. However, the obviousness doctrine under the law is not synonymous with the common meaning of the word obvious and a patent attorney may have a different opinion that your idea could be patentable and may not be found obvious under the law.

Many low cost patent search providers do not provide an analysis of the search results but only provide you with a pile of patent documents and leave it up to you to figure out what they mean. We think it is important to obtain a patent attorney’s analysis of any patent search results.

Am I Guaranteed to Get a Patent After A Patent Search?
The short answer is no. Even if a patent search provides results that show a favorable position for the client to proceed with a patent application, non-public prior-art may still exist which could prevent you from obtaining a patent. Most U.S. Patent applications are secret or not publicly available for 18 months after the date that the patent application is filed. Some patents are not publicly available until, and if, the application issues into a patent. However, a patent application that was filed a month ago on the same invention as your invention, would not be discovered in a patent search today, but could be considered prior art that could prevent you from obtaining a patent on your invention.

This seems unfair. Why can non-public patent applications be used as prior art against my invention? The publication period and prior art effect reflects a balancing between informing the public of inventions in patent applications and some patent applicants’ desire to keep the applicant’s idea private before a patent is issued to prevent copying during the patent pending stage.

Even though a patent search cannot guarantee a patent will result from a patent application on the invention, a patent search is a reasonable step to ensure that publicly available prior art patents or patent applications do not exist that could block you from obtaining a patent on your idea.

Can the Results of a Patent Search Inform the Value of a Patent on my Idea?
The question of the value of a particular patent is a difficult question that is the subject of many different types of analysis. However, you should consider that a patent may have value in a number of ways, such as: (1) the extent that you can stop competitors from copying your idea, (2) the extent to which other companies will be interested in paying you for a license to make or use the technology of your patent, and (3) the extent to which customers, inventors, financial institutions, and others will be impressed by you having a patent in a way that is helpful to you.

With respect the first and second points above, a patent may be considered valuable to the extent that others cannot design around your patent and provide customers a similar product while not infringing your patent. A patent attorney will seek the broadest protection on your idea to reduce the possibility that competitors could design around your patent. However, a patent attorney cannot draft the claims in your patent that would cover the prior art. Therefore a patent search can inform you of how broad the scope of protection you could achieve by showing you what a patent on your idea could not cover. A patent on your idea could not cover the prior art. Therefore if the patent search reveals prior art which your competitors can use and which your patent can not cover, then you must consider whether the features of your invention that are not disclosed in the prior art are features which your customers would seek out or whether customers would be happy with the unprotectable features shown in the prior art. In other words, are the new features of your invention sufficiently important to customers, such that customers will seek those features from you as opposed to choosing features in the prior art provided by competitors? To the extent that the results of a patentability search assist in considering those questions, the search may be helpful in determining the business value that a resulting patent might provide. A patent is no guarantee of the commercial success of your idea, especially if customers are happy to use products having prior art features.

To illustrate this idea further, consider a scenario where a patent is analogized to a fence that is placed around a plot of land. In this analogy a patent is like a fence and the land within the fence is like your idea or invention claimed in a patent. The fence allows you to determine who can occupy or use the land and what they must pay for doing so. The fence is valuable to the extent that customers want to occupy or use your plot of land for the price you offer for access to the land. If the customers are happy to use alternatives such as competitors’ land or public land, then your patent is worth less than it would be if customers were unhappy with the alternatives and sought your land because of the features and benefits unique to your land.

Conclusion
A patentability search is generally helpful in determining whether you could obtain a patent on your idea. It is also helpful in determining the scope of patent protection that you might be able to achieve.

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