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.