Nyman IP
Scott Nyman

Registered Patent Attorney


Patentability Search and Opinion (Novelty Search)

What is a patentability search?

When speaking with inventors, one of the most frequent questions I receive is, “can this invention be patented?” Of course, the answer is not always straightforward and requires a significant amount of research and analysis. Inventors may perform the search and analysis on their own, using some of the free and publicly available tools on the internet. However, many inventors find it more effective to hire a patent attorney to perform the search and form an opinion regarding the patentability of an invention before proceeding further.

Often, this is where patent attorneys such as myself become first involved in the patent application process. Many times, I cannot make an informed opinion on whether an invention would be eligible for patent protection without first seeing what exists in the prior art, or the vast field of knowledge available to the public. Most often, I collect a large number of related patents, patent applications, and non-patent publications to review before forming an opinion. I review these references carefully, comparing the contents of the references to an invention disclosure that I received from the inventor. If I have questions, I will contact the inventor and discuss related prior art to ensure that I clearly understand how the invention may differ before forming my opinion of patentability. Then, after all the information has been considered, I can advise the inventor as to what he or she is likely to expect if applying for a patent before the U.S. Patent and Trademark Office. 

Do I need to conduct a patentability search before filing a patent application? 

Conducting a patent search and receiving an opinion on patentability is not a required step in the process of filing a U.S. patent application. However, since the cost of a search and opinion is substantially lower than the drafting, filing, and prosecution of a patent application, many inventors find it wise to perform this initial step. Patent prosecution is just a term of art for the negotiation stage with the U.S. Patent Office in an attempt to get a patent application allowed to issue as a valid and enforceable U.S. patent. 

I usually advise potential clients to perform an initial search before engaging my services. As a legal advisor, I swore an oath to represent my clients in their best interests, even if that means losing business due to a potential client deciding not to proceed with the application process. When performing an inventor’s initial patent search, it is important for the inventor to try and find his or her invention, and not to create novelty where it does not exist. If the search produces a clear indication that the invention already exists, the inventor may save a significant amount of money that would otherwise be spent drafting and prosecuting a patent application that would likely result in being finally rejected by the U.S. Patent Office. 

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As soon as Mar 01, 2020

What does it include?

Patentability search and opinion: $1900 (U.S. references only)

Please note that this quote is provided as a flat fee covering only the activities listed below.

- Review and analysis of invention disclosure.

- Additional research required to adequately describe the invention.

- Drafting and revising search description.

- Commissioning patentability search (search fees included). A $500 additional fee is required for search and analysis of international references.

- Telephone and email correspondence with inventors regarding invention disclosure, search description, and patentability opinion.

- Drafting and revising professional search report and patentability opinion.

The patent application process is generally divided into smaller processes that create a basic timeline from conception to issue. Not all the steps in the patent timeline may be required, and an applicant’s timeline may differ depending on his or her specific needs. The service summarized above is for the initial step of performing a patentability search and analysis. Additional steps will often be required, and vary from application to application. Due to the large variation between applications, each step of the process will be analyzed and quoted as they occur. For most applicants, every step from application to issue and maintenance can be performed using flat rates.

Before any service can begin, Nyman IP must conduct a conflict check to ensure all parties can work together. Additionally, a representation agreement must be signed and accepted before representation can begin or any services are performed. The above quote uses flat fee pricing and covers the services listed with each activity. If searching of international references is desired, additional costs will be added to the fees for legal services to determine a total fixed-rate flat fee.

Why is it important?

Prior to evaluating a claimed invention for compliance with the statutory requirements, an examiner at the U.S. Patent and Trademark Office will conduct a thorough search of the prior art. Generally, a thorough search involves reviewing both U.S. and foreign patents, applications, and nonpatent literature. In many cases, the result of such a search will contribute to USPTO personnel’s understanding of the invention. Both claimed and unclaimed aspects of the invention described in the specification can be searched if there is a reasonable expectation that the unclaimed aspects may be later claimed.

While there are many free resources to search the public databases of patent and non-patent publications, it can be difficult to anticipate how a USPTO examiner may view an invention without experience prosecuting patent applications. If this all seems a bit overwhelming, then it may be a good idea to let an attorney such as myself conduct the search and analyze the results.

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