Why Conduct a Patentability Search Before Filing a Patent?

If you’ve come up with a new invention and are thinking about getting a patent, there’s an important first step you shouldn’t skip a patentability search. This search helps you find out if your invention is truly unique or if something similar has already been invented. It’s a way to check if you’re likely to get a patent before spending time and money on the patent application process. By doing a patentability search, you can avoid potential barriers, refine your invention, and make smarter decisions about how to protect it.

What is a Patentability Search?

A patentability search, also known as a novelty search, is the process of investigating prior art to determine whether an invention is eligible for patent protection. The search is designed to assess whether the invention is novel and non-obvious, two of the main criteria for obtaining a patent.

The objective of patentability search strategy is to establish the chance or likelihood of an invention getting a patent especially on the worldwide criteria of novelty and non-obviousness.

The purpose of a patentability search that include all types of prior art is to discover prior art and determine if the subject matter is patentable or not. Keep in mind that it saves unnecessary costs on patent preparation.

Reasons to Conduct a Patentability Search

• Assess Novelty and Non-Obviousness: To be patentable, an invention must be new. A patentability search helps you determine whether your invention has already been disclosed in any form, such as in published patents, technical journals, or commercial products.

The invention must also be non-obvious, meaning it cannot be a simple modification of existing ideas or technologies. A patentability search can help assess whether your invention would be considered obvious by comparing it to existing prior art.

• Avoid Wasting Time and Resources: The process of filing and obtaining a patent can be time-consuming and expensive. Filing fees, attorney costs, and the time spent preparing a patent application add up quickly. Conducting a patentability search early on helps determine whether your invention is likely to qualify for patent protection, avoiding wasted effort if it turns out the invention is already patented or not patentable due to prior art.

By identifying existing patents or disclosures that may block your application, you can avoid investing in a patent application that is doomed to fail.

• Improve Chances of Patent Approval: Patent examiners conduct their own prior art searches during the examination phase of a patent application. If they find prior art that was missed in the initial application, it could result in rejections or significant delays. A thorough patentability search can uncover the same prior art the examiner is likely to find, allowing you to address potential issues proactively in the application.

A well-researched application that anticipates prior art and explains how the invention is novel will have a better chance of being granted.

Fewer rejections or objections from the examiner can speed up the patent approval process, making it less expensive and more efficient.

• Identify Potential Infringements Early: When conducting a patentability search, you may come across patents held by competitors or others in your industry. This knowledge is crucial, as it helps you avoid potential legal challenges. In some cases, your invention may infringe upon an existing patent. Knowing this early allows you to either revise your invention or explore licensing agreements before moving forward with the patent process.

Understanding the landscape of existing patents can prevent costly infringement lawsuits later.You may identify existing patents that you could license, turning a potential competitor into a business partner instead of an opponent.

• Plan for Future IP Strategy: Conducting a patentability search is a foundational step in building a long-term intellectual property strategy. It gives inventors a clear picture of where their invention stands in the broader landscape of technological development. With this knowledge, you can decide whether to pursue a patent, develop further innovations, or protect your invention using alternative IP strategies such as trade secrets.

If you have multiple innovations in development, a patentability search can help you prioritize which to pursue based on their likelihood of success and strategic value.

• Licensing and Commercialization

  A patentability search can also reveal licensing and commercialization opportunities. By identifying who else holds patents in your space, you can spot potential licensing partners or buyers, understand the commercial value of your invention, and negotiate from a stronger position.

Can You Conduct a Patentability Search on Your Own?

While it’s possible to conduct a preliminary patent search using free databases like Google Patents, Espacenet, or the USPTO’s database, patent searches can be complex. The patent language, legal frameworks, and classification systems are often challenging for non-experts to navigate. Therefore, it’s highly recommended to consult with a patent professional or professional patent search firm to ensure a comprehensive and accurate search.

Conducting a patentability search is a crucial step in the innovation and patenting process. It helps inventors assess the novelty and viability of their inventions, avoid costly mistakes, and make informed business decisions. Whether you’re an individual inventor, a start-up, or an established company, a patentability search ensures that your time, resources, and innovations are well-protected and positioned for success in the competitive world of technology and innovation.