Patentability Search (Patent Novelty Search)

A Patentability Search, also known as a Patent Novelty Search, is a Patent Prior Art Search conducted on behalf of a potential patent applicant during the initial feasibility stage of product development or at least before preparing a patent application.

The patentability search will determine whether anyone else publicly disclosed an inventive concept prior to a critical date.  The patentability search will also help to better define the inventive contribution of the new product over the prior art, speed up prosecution, and improve the defensibility of the future patent.

Determine Whether to Pursue Patent Protection

One objective of a patentability search is to determine if the potential invention is patentable based on the published prior art.  The Patent Office may grant a patent for an inventive concept if it is new, useful, and non-obvious to one of ordinary skill in the art.  If the inventive concept is not patentable, continued development of the idea may not be justified.

Use Search Results to Strengthen Your Patent Application

Another objective of the patentability or novelty search is to flush out prior art before the patent application is filed.  The patent attorney or patent agent will then use the prior art search results to assist in writing a patent application and to draw up the broadest possible set of claims without treading on the known prior art.

Without a solid understanding of the prior art, it is difficult to draft novel claims with the appropriate scope.  In other words, one cannot point out what is novel about an inventive concept without an understanding of previous work.  The patentability search may also suggest new uses or new markets that the inventor did not consider for the inventive concept.

Preempt the Examiner's Prior Art Rejections

Ideally, this preemptive patentability search will locate the prior art that an Examiner would have asserted in a first office action, and will lead to a better set of claims being allowed at an earlier date.  Thus, the patentability search speeds patent prosecution by allowing claims to be tailored to avoid the prior art before the Examiner's own search.  Whether such prior art is actually found depends on how much time is allocated to the prior art search and on the skill of the searcher.

A Patentability Search is NOT an Infringement Search

It is important to realize that a patentability search is NOT an infringement search.  In other words, the purpose is not to determine whether an inventive concept might infringe one or more existing patents.  It is possible to have an invention which is patentable but which also infringes one or more other patents.

What Prior Art is Searched?

The depth and length of a prior art search is a function of available time and budget.  A patentability search places no date constraints on how far back to search the prior art.  Ideally, a patentability search will cover all granted patents, published patent applications, and non-patent literature published anywhere in the world.  It would also uncover any evidence of past public use or sales.

Although such a prior art search would ideally scour the earth for references, cost considerations generally confine the scope of a Patentability Search.  There is no economical, systematic way that all sources of prior art can be searched.  However, a patent prior art database search performed by a skilled prior art searcher is the most cost-effective means for locating pertinent prior art prior to filing a patent application.

Our Basic Patentability Search limits the prior art search to all properly classified U.S. patents and published patent applications.  This prior art database search is not exhaustive but generally provides a reasonably priced set of results on which an analysis can be performed.  A more exhaustive prior art search is more expensive and can still only cover so much of worldwide publications.

In conducting a Premium Patentability Search, we will also search European and Japanese patents and applications.  The patents issued or patent applications published by the USPTO, EPO, PCT, and JPO cover more than 90% of patents and applications filed worldwide.

Unless specifically requested to do so, we will not search periodicals and textbooks because they are not well-classified and obtaining documents can be costly and time consuming.

For an additional fee, we can provide you with a written opinion as to patentability.

Critical Dates: the Date of Invention and Statutory Bars

The patentability search attempts to locate prior art patents or nonpatent publications that predate a critical date that corresponds to the date of invention of the target patent.

In a first-to-invent country such as the U.S. or the Philippines, when an inventor conceives an invention and diligently reduces it to practice, the date of invention will be the date of conception.  Thus, in a first-to-invent country where the inventor diligently reduced the invention to practice, the date of a reference must precede the date of conception in order to be prior art.

In a first-to-file country, the date of invention is the date the applicant files a patent application.  In such a country, the date of a reference need only precede the date the patent application was filed in order to be prior art.  Note that even in a first-to-file country the date of invention will be the patent application filing date if the inventor does not diligently reduce the invention to practice.

An additional class of prior art pertaining to a "statutory bar" applies to U.S. patents.  Novelty is defeated if the invention was patented or described in a printed publication in the U.S. or a foreign country more than one year before the application date, or if the invention was in public use or on sale in the U.S. before the application date.

Do I Need to Conduct a Patentability Search?

No patent office requires that an applicant conduct a prior art search before filing a patent application.  In the U.S., the Court of Appeals for the Federal Circuit has stated explicitly that patent applicants have "no duty to conduct a prior art search."  Frazier v. Roussel Cine Photo Tech, Inc., 417 F.3d 1230 (Fed. Cir. 2005).

Although conducting a prior art search is not a legal requirement, we recommend that you obtain such a search in most situations.  In particular, before an individual inventor expends substantial effort and expense, we advise that a prior art search be performed to determine whether others have already staked a claim to that inventive concept.

The cost of preparing, filing, and prosecuting a patent application is substantial and will be much greater than the cost of a routine search.  A patentability search will determine whether to file a patent application, anticipate many of the issues that will arise during prosecution, better define the invention, and assist with claim interpretation after patent issuance.  One study suggests that conducting a patentability search improves the chances of receiving a patent.

The U.S. Patent and Trademark Office (USPTO) recommends that a patentability search be conducted:

"A search of all previous public disclosures (prior art) including, but not limited to, previously patented inventions in the U.S. should be conducted to determine if your invention has been publicly disclosed and thus is not patentable.  While a search of the prior art before the filing of an application is not required, it is advisable to do so."  USPTO on conducting a prior art search.

The European Patent Office (EPO) agrees that an inventor should obtain a prior art search:

"Where do inventors go wrong?

When it comes to prior art searching, many inventors simply scratch the surface.  By far the most common mistake they make is to assume that their idea is novel, when a simple patent search would tell them that it was not.  They then make things worse by spending often large sums of money on an idea that is extremely unlikely to be commercially successful."  EPO on conducting a prior art search.

Can I do a Patentability Search Myself?

Yes, some patent applicants conduct a patentability search themselves.  Other applicants shop around for the cheapest prior art search they can find.  However, there are subtleties of semantics and strategy in researching patent specifications that make it advisable to engage an experienced search professional.

The U.S. Patent and Trademark Office suggests that a registered patent attorney or agent is a useful resource for conducting a patentability search:

"A registered attorney or agent is often a useful resource for performance of a patentability search. After an application is filed, the USPTO will conduct a search as part of the official examination process. Conducting a thorough patent search is difficult, particularly for the novice.  Patent searching is a learned skill."  USPTO on using patent attorney or patent agent for prior art search.

The European Patent Office points out that the real skill in patent searching is the ability to interpret the results, something neither the inventor nor a lay patent searcher is qualified to do:

"Searches by patent attorneys.  Fees usually vary according to the type of search you need.  A patent attorney will also be able to help you interpret your search findings.  This is the real skill in patent searching.  (emphasis in original)  EPO on searches by patent attorneys.

It is unwise to skimp on a prior art search, only to discover later that others have already locked up the rights to the invention.

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