Patent searches play an essential role in protecting inventions and avoiding legal disputes. Two of the most common searches are patentability search and prior art search.
Although both involve examining patents and related documents, they serve very different purposes. Patentability searches help determine if an invention can be patented, while prior art searches are often used to challenge or assess the validity of an existing patent.
Understanding this difference is critical for inventors, businesses, and attorneys. It helps avoid costly mistakes, ensures better decisions, and strengthens intellectual property protection.
Understanding Patentability Search
A patentability search, often called a novelty search, focuses on determining whether an invention is eligible for a patent. It involves analyzing patent databases, published applications, scientific literature, and other public sources to check if an invention is new and non-obvious.
This search is typically the first step in the patent filing process. By conducting it early, inventors gain insight into their chances of approval and can adjust their strategy to avoid unnecessary costs.
For example, if a startup develops a new type of wearable health monitor, a patentability search could reveal similar inventions that already exist. This allows the startup to refine the design or focus on unique features before filing, increasing the likelihood of a successful patent application.
Purpose of a Patentability Search
The main goals of a patentability search include:
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Determining whether an invention is novel and patentable
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Identifying related prior art to refine the patent application
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Avoiding rejected applications caused by existing inventions
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Saving time and money by adjusting designs before filing
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Strengthening claim language to improve approval chances
This proactive approach reduces the likelihood of office actions from the USPTO and creates a clear path toward patent protection.
When to Conduct a Patentability Search
A patentability search should be performed before drafting or filing a patent application.
By doing this early, inventors can avoid wasting resources on ideas that lack novelty.
For example, if an entrepreneur is about to invest heavily in manufacturing a new gadget, a patentability search could prevent them from spending money on a product that cannot be patented.
Understanding Prior Art Search
A prior art search is broader and typically used for legal or competitive purposes rather than initial filing. Prior art includes any publicly available information that might affect a patent’s enforceability, such as:
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Existing patents and published applications
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Technical publications and research papers
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Publicly available products or demonstrations
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Industry reports or online disclosures
This type of search is commonly performed when evaluating whether an existing patent is valid or when defending against infringement claims.
For instance, if a company is accused of infringing a competitor’s patent, a prior art search might uncover an older patent or publication that invalidates the competitor’s claim. This evidence can be used in court to challenge the patent’s validity.
Key Goals of Prior Art Search
The main objectives of a prior art search are:
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Assessing the validity of a granted patent
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Identifying potential infringement risks
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Supporting litigation or opposition proceedings
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Conducting due diligence in mergers or acquisitions
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Finding evidence for licensing or negotiation purposes
When to Use Prior Art Search
A prior art search is usually conducted:
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After a patent is granted if there’s a dispute over its validity
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During litigation or opposition proceedings
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Before entering licensing or partnership agreements
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When evaluating competitor patents for business expansion
For example, if a large electronics company wants to acquire a smaller startup, a prior art search can reveal whether the startup’s patents are enforceable or at risk of invalidation.
Key Differences Between Patentability Search and Prior Art Search
Patentability and prior art searches both examine existing patents and publications, but they serve different purposes:
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Patentability search focuses on whether an invention can be patented in the first place.
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Prior art search focuses on whether an existing patent can be challenged or if a product may infringe a competitor’s patent.
In practical terms, inventors use patentability searches before filing. Attorneys and corporations typically use prior art searches during disputes, licensing, or acquisitions.
For example, a patentability search would be used by a startup developing new software. Meanwhile, a prior art search would be used by a competitor trying to invalidate that software patent in court.
Why These Searches Matter in the Patent Process
Both searches are essential for a strong intellectual property strategy:
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Patentability searches prevent wasted investments on inventions that cannot be patented.
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Prior art searches reduce the risk of lawsuits or invalid patents being enforced.
For example, a medical device manufacturer once avoided a costly lawsuit by conducting a prior art search that revealed an older patent, proving that a competitor’s claim was invalid.
Businesses that invest in these searches early often save significant legal costs and avoid disputes later.
How to Choose the Right Search for Your Needs
Choosing between a patentability search and a prior art search depends on your goals:
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If you are preparing to file a patent: Conduct a patentability search to ensure novelty and avoid rejections.
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If you are challenging a competitor’s patent: Conduct a prior art search to find evidence for invalidation.
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If you are evaluating IP during a business deal: Use a prior art search to confirm the strength of the patents involved.
In many cases, businesses use both searches. For example, a company may conduct a patentability search to secure its own patents and later run a prior art search to defend against infringement claims.
Common Mistakes to Avoid in Patent Searches
Many inventors and businesses make costly errors when it comes to patent searches:
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Skipping a search entirely to save money, leading to rejected applications or infringement disputes
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Confusing the two searches, resulting in the wrong type of analysis
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Relying only on free search tools instead of professional databases
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Failing to update searches as technology and publications evolve
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Not involving professionals, which can lead to incomplete or inaccurate results
Avoiding these mistakes ensures better legal protection and a smoother patent process.
Case Study: How a Prior Art Search Saved a Startup
A tech startup developed a new wireless charging system and filed for a patent. A larger competitor claimed that the startup’s technology infringed on one of its existing patents.
The startup commissioned a prior art search, which uncovered a research paper published years earlier describing similar technology. This prior art invalidated the competitor’s patent, allowing the startup to continue its operations without litigation.
This example shows how a prior art search can be the difference between a successful business and a costly legal battle.
FAQs
Q1: Can a patentability search replace a prior art search?
No. Patentability searches help assess novelty before filing, while prior art searches are used for validity and infringement challenges. They serve different purposes.
Q2: How much do these searches cost?
Patentability searches are typically less expensive because they are narrower in scope. Prior art searches can cost more due to their depth and use in legal disputes.
Q3: Are both searches required for every invention?
Not always. Many inventors only need a patentability search before filing. However, businesses engaged in litigation or acquisitions often require prior art searches.
Q4: Can I perform these searches myself?
Free tools exist, but professional searches are far more accurate. Patent professionals use specialized databases and expertise to find results that DIY searches often miss.
Q5: How long do these searches take?
A patentability search may take a few days. A prior art search, especially for litigation purposes, can take several weeks due to its complexity.
Q6: What happens if prior art is found against my patent?
If strong prior art is discovered, your claims may need to be narrowed or your strategy adjusted. In some cases, it may be better to focus on other innovations.
Conclusion
Patentability and prior art searches play different but complementary roles in protecting inventions.
Understanding these differences helps inventors, businesses, and attorneys make informed decisions.
Investing in the right search at the right time not only saves costs but also strengthens your intellectual property position and reduces legal risks.
Get a professional patentability search before filing your application to avoid rejection and strengthen your IP strategy.
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