Patent applications undergo vigorous examination by U.S. and foreign patent offices. During this process, the invention is compared to thousands of prior patents, patent applications and other publications, that is publications that pre-date the invention. Often, a patent attorney suggests performing a patentability search before the application is prepared and filed.
What is a patentability search?
A novelty assessment is a crucial part of the preliminary patentability search process. It involves evaluating whether an invention is new and has not been disclosed in any prior art. To compare the invention to prior technical solutions, it is important to break down the invention into its core components and features. What is unique about the invention, what elements or process steps help to solve the problem, which the invention addresses? These are the features that will be compared with the prior art to identify similarities and differences. The invention must be new in its entirety or in the way it combines known elements.
What Is Searched?
First, a searcher identifies the area of the prior art, that is the field most relevant to the invention. This includes any existing patents, published patent applications, scientific literature, products, and other publicly available information. Depending on how broad the patentability search is desired and what would be the most practical coverage, the search may focus on U.S. patents and patent applications. A more in-depth search may include the database of the European Patent Office and some additional Internet search for unpatented products and services. More comprehensive searches cost more, and that cost may exceed the cost of an application. Therefore, in practice, the most often performed search, with a reasonable cost, focuses on the database available in the U.S. Patent Office.
During the search, an emphasis is made on finding the prior art that discloses the core components of the invention, as identified by the inventor. Armed with the search results, an attorney analyzes the similarities and differences between the invention and the researched prior art. The goal is to determine if the invention has any unique features that are not disclosed in the prior art. For an invention to be considered novel, it must not be disclosed in a single piece of prior art (novelty of the invention). Even if the invention is a combination of known elements, it must combine them in a novel way (non-obviousness of the invention). An attorney then creates a report that outlines the prior art found, the comparison with the invention, and the conclusions regarding its novelty.
What are the benefits of a patent search?
The preliminary patentability search helps identify potential issues at an early stage, before the patent application is prepared and filed.
The search results may help the attorney to refine the application and concentrate on the truly unique features of the invention, increasing the probability of receiving a favorable decision from the Patent Office.
The inventor can evaluate the competitive advantage of the invention at an earlier stage.
The search may reduce the risk of a potential infringement by allowing the inventor to modify the invention before investing in the protection of the invention or manufacturing the product that might interfere with another valid patent.