US-Based Patentability Searches

A patent protects you from other people copying your invention.  A patentability search is the first step toward filing for patent protection.

An invention must pass a four-prong test for patentability.  It must be statutory (subject matter eligible), new (novel), useful, and not obvious.

A patentability search tests for novelty.  This low-cost prior art search scours public information sources looking for an earlier disclosure of your innovation.

An inventor can optionally request from us a patentability assessment for an additional fee.  The assessment compares each reference found during the search to your invention and provides an opinion on patentability.

Patentability Search Cost

A patentability search saves money.  If your concept is already known, you save the cost of filing for a patent.  If your invention is new, you will pay less when prosecuting your patent application.

A registered patent practitioner will conduct your search.  Our rates are no higher than less-qualified lay searchers.  We provide patentability opinions for an added fee.

Patentability Assessment Distinguished

All search firms will give you a patentability search report.  It will list each patent and provide a short summary of each reference found.  But unless the search came up empty, the report alone will not tell you whether your idea is patentable

To determine patentability, someone needs to compare each reference with your invention.  Then they need to conclude whether any of the references blocks patentability.  Some inventors want to perform this task themselves.

Most other inventors want a patentability assessment, which includes a patentability opinion.  The assessment analyzes each reference and provides a written patentability opinion.

As registered patent practitioners, we can render patentability opinions.  As explained in the next section, though, most other searchers cannot provide opinions.

Only Registered Practitioners Can Give Patentability Opinions

In the U.S., only registered patent practitioners can give patentability opinions.  These individuals have passed an exam given by the U.S. Patent and Trademark Office ("Patent Office").  Registered patent practitioners are either patent attorneys or patent agents.

A lay searcher has not passed the Patent Office exam. They can only provide a bare-bones patent search report to inventors.  Indeed, lay searchers giving patentability opinions are practicing law without a license.

Thus, clients of lay searchers who want an opinion must look for a registered patent practitioner.  As such, we can offer both a prior art search and an optional patentability assessment.

A Patentability Search is an Inspection

A patentability search is a bit like a pre-purchase used car inspection.  The mechanic cannot ensure the auto will be trouble-free but can spot visible defects.  Likewise, a patentability search cannot guarantee patentability but can spot blocking prior art.  If you learn your idea is unoriginal, you can avoid wasting money on drafting and filing for a patent.

Be Wary of Ultra-Low-Cost Patent Searches

The marketplace is rife with low-cost patent searches.  Be wary.  Many of these so-called patent searchers are novices.  Others lack English fluency.  Few offer a verifiable work history as a patent searcher.  Anyone can call themselves a patent searcher.

Patent searching is not a fungible skill.  Databases contain more than 100 million patent documents.  The Cooperative Patent Classification (CPC) scheme has 250,000 distinct technical categories.  It takes years to become proficient at searching massive patent data sets.

A Good Search is the Basis of a Good Opinion

A patentability opinion will not offer a blanket verdict on patentability.  It only analyzes whether the references in the search report will block patentability.

Thus, a competent prior art search forms the basis of a meaningful opinion.  A poor search that missed crucial prior art leads to a useless patentability opinion.  As the expression says, garbage in, garbage out.

If you want a good search, choosing a patent search company on price alone is a mistake.  Find someone with native English fluency and a long, proven history as a patent searcher.  Then find a patent attorney or patent agent to interpret the patent search report.  Otherwise, your patentability assessment will be a hollow exercise.

Patentability Searches in More Detail

An invention must pass a four-prong test for patentability.  It must be statutory (subject matter eligible), new (novel), useful, and not obvious.

A patentability search determines whether your invention meets the novelty test.  This cost-effective prior art search scours public information sources for your innovation.  It will also improve any later-filed patent application.

Prior art refers to the entire body of pre-existing knowledge.  This body includes patents, publications, products, and activities.  A patentability search scours the prior art to find disclosures close to your design.

If your patent search finds an earlier disclosure of your concept, it is unpatentable.  That result is disappointing but spares you the cost of filing a patent application.

If your concept is novel, the patentability search report will provide significant benefits.  The patent search report can:

The following sections consider these benefits.

Draft Optimal Claims

Patent claims define the scope of the property rights to your invention.  The claims delineate the boundaries between your inventive contribution and the prior art.  Applying for a patent without a patentability search is like driving while blindfolded.  A patentability search helps to point out the novelty of the inventive concept.  The patent drafter uses the patent search report to draw up broader claims that do not read on the prior art.

Speed Up Prosecution

Patent prosecution refers to negotiating with the PTO over the application.  Every exchange with the PTO costs money.  The practitioner uses the search report to draft claims distinguishing the prior art.  These well-drafted claims will preempt later claim rejections by the examiner.  Speeding up prosecution saves money.

Fortify Your Patent

A patent is more defensible if the PTO has considered the best prior art.  Applicants should submit the search report references in an Information Disclosure Statement (IDS).  The IDS will harden the patent against future challenges based on that prior art.

Limitations of Patentability Searches

Patentability searches have limitations.  First, the cost of finding every relevant reference is prohibitive.  Scorched-earth tactics make sense only in litigation, where the stakes are high.  A cost-effective patentability search focuses on patent publications because examiners look there first.

Second, a prior art search can only find references in the public domain.  The PTO keeps filed applications secret for 18 months.   Thus, a patentability search cannot find applications filed within that 18-month window.  The examiner can reject your claims over publications unavailable during your search.

Third, patentability search methods include patent classification and keyword searching.  Implementation of both methods involves elements of subjectivity.  Thus, a search may not find misclassified patents or documents using unusual terminology.

Well-informed inventors take these limitations into account when setting their expectations.

The Patentability Opinion

A patentability opinion has limited scope.  It analyzes whether an invention is patentable over the search report references.  It does not guarantee that you will receive a patent.  A good patentability opinion first establishes a reasonable search of the relevant art.  Second, it compares the invention and each reference.  Third, it will suggest a course of action.

The cost of an opinion depends on design complexity and the number of references.  Client needs can drive fees higher.  Sometimes clients want limited prior art searches and a low-cost legal opinion.  At other times, a client needs a comprehensive patentability assessment for potential investors.

Patentability versus Product Clearance Searches

A patentability search only determines whether an inventive concept is patentable.  It does not tell you whether implementing your invention infringes an existing patent. Indeed, it is not unusual for a novel invention to infringe pre-existing patents.

The distinction between patentability and clearance searches can confuse inventors.  A hypothetical example may help.

Assume that a new patent claims elements A + B + C + D.  Yet a product with that four-element combination infringes an older patent claiming A + B + C until that older patent expires.

The preceding example highlights an often-misunderstood concept in patent law.  A patent does not give inventors the right to practice their invention; rather, it gives the right to exclude others from practicing it.

A product clearance search looks for unexpired patents that read on a product.  The clearance search must focus on patent claim language.  A product clearance search is more comprehensive and expensive than a patentability search.

Is a Patentability Search Necessary?

"An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent."  MPEP § 410 (9th Ed., revised June 2020).  See also Frazier v. Roussel Cine Photo Tech, Inc., 417 F.3d 1230 (Fed. Cir. 2005).

We nonetheless recommend that individual inventors get a patentability search in most situations.  The U.S. Patent and Trademark Office (USPTO) advises inventors to search the prior art:

A search of all previous public disclosures (prior art) including, but not limited to previously patented inventions in the U.S. (prior art) should be conducted to determine if your invention has been publicly disclosed and thus is not patentable.  A search of foreign patents and printed publications should also be conducted.  While a search of the prior art before the filing of an application is not required, it is advisable to do so. - USPTO FAQ: "How do I know if my invention is patentable?

Can I do a Patentability Search Myself?

To save money, inventors sometimes conduct a patentability search themselves.  Inventor searches can be educational and helpful as a first step. But inventors often find nothing relevant even though relevant references exist.

Like many do-it-yourself projects, a professional achieves better results most of the time.

You can do a patent search yourself.  You can also try to overhaul your car's engine yourself.  I don't recommend that you do either. - Findlaw (2008)