Filing a patent without a prior patentability search is like launching a product without knowing the market—it invites costly surprises. A patentability search, also known as a novelty search, helps determine whether your invention is genuinely new and potentially patentable.
Too often, inventors submit applications that are later rejected due to existing inventions (prior art) they didn’t know about. This leads to lost time, wasted money, and missed opportunities.
In this post, we explain why every inventor should start with a patentability search, how it works, and how it can influence your success with the USPTO.
What Is a Patentability Search?
A patentability search investigates whether an invention meets the requirements of novelty and non-obviousness by reviewing published patents, patent applications, and non-patent literature.
The goal is to identify prior art—anything already known or publicly disclosed—that could prevent your idea from being granted a patent.
This search:
- Covers global patent databases (e.g., USPTO, EPO, WIPO)
- Includes non-patent literature like journals, product catalogs, and academic research
- Helps assess the likelihood of patent approval
A well-executed patentability search gives inventors the confidence to move forward—or a reality check before investing in filing.
Difference Between Patentability and Prior Art Searches
The patentability search is performed before filing. It tells you whether your invention is new enough to be patentable.
A prior art search is broader. It's often used during litigation, invalidation proceedings, or patent opposition cases to challenge the novelty of an already granted patent.
In short:
- Patentability search = pre-filing assessment
- Prior art search = post-grant defense or attack
Key Reasons to Conduct a Patentability Search Before Filing
Here are the major benefits of conducting a novelty search before submitting your patent application.
Identifying Similar Inventions Early
Even if your invention seems unique to you, similar ideas may already exist. A thorough patentability search can uncover:
- Existing patents that describe the same or a similar solution
- Published patent applications that are still under examination
- Products or research papers describing similar functionality
Example:
An engineer designs a wearable fitness tracker with a specific motion-sensing feature. A search reveals a Korean patent application with almost identical technology filed two years earlier. With this insight, the inventor refines the design and focuses on a unique software algorithm instead—leading to a successful patent later.
Early awareness helps you pivot, enhance, or even abandon ideas that are too close to existing inventions.
Saving Time and Filing Costs
Filing a patent application is expensive. Between USPTO fees, attorney costs, and drawings, the total expense can range from $5,000 to $20,000+.
Without a novelty search, you're gambling that your invention will pass USPTO scrutiny. If your application gets rejected due to existing prior art, all that investment is lost.
By conducting a patentability search upfront, you:
- Filter out weak ideas early
- Reduce office actions (costing extra time and attorney fees)
- Improve the ROI of your R&D budget
Case Study:
A biotech startup spent over $12,000 drafting and filing a patent for a gene therapy technique. It was later rejected because a university research paper had already disclosed a similar approach. A simple pre-filing patentability search would have uncovered that paper, saving the company both time and money.
Improving Patent Claims Strength
Understanding what’s already out there helps you draft stronger and more focused claims in your patent application.
Instead of making broad claims that risk overlap with existing patents, you can:
- Carve out novel aspects of your invention
- Frame your innovation with greater clarity
- Preempt examiner objections
Better claims mean:
- Fewer rejections
- Faster examination process
- More enforceable patents
What Happens If You Skip a Patentability Search?
Many inventors make the mistake of filing patents without verifying novelty. This can lead to serious consequences.
High Risk of USPTO Rejection
USPTO examiners conduct their own prior art searches. If they find similar disclosures, your application may be:
- Rejected outright
- Subject to repeated rejections (office actions)
- Narrowed until it's nearly worthless
In most cases, USPTO fees are non-refundable, even if your application fails.
Wasted R&D Budget
Product development is costly. If your invention isn't patentable, you may:
- Lose your competitive edge
- Be unable to protect your product from imitation
- Face legal issues if your invention overlaps with existing IP
Example:
A consumer electronics firm spent over $100,000 developing a smart thermostat. Their patent was later denied due to a nearly identical patent granted five years earlier. This setback delayed their launch by 12 months and damaged investor confidence.
How to Perform a Patentability Search Effectively
Patent searches aren't just about typing your idea into Google Patents. They're about structured, strategic research.
DIY Tools vs Professional Search Services
You can start with free tools like:
- Google Patents
- Espacenet
- USPTO Patent Full-Text Database
However, DIY searches have limitations:
- Patents use legal and technical language that’s hard to interpret
- Missed synonyms or classification codes may lead to incomplete results
- You may fail to identify incorrect prior art
Professional search firms offer:
- Advanced database access
- Expertise in patent classifications (CPC/IPC)
- Contextual analysis of your invention
Tip:
If your idea is simple and straightforward, a DIY search may be enough to gauge obvious overlaps. For complex or high-stakes inventions, professional services are strongly recommended.
What a Good Patentability Report Should Include
A comprehensive novelty report should cover:
- Search strategy (keywords, classes, databases used)
- Relevant prior art documents with summaries
- Comparison with your invention
- Legal insights on novelty and non-obviousness
The report helps you understand whether to file, modify your idea, or explore other IP options like trade secrets.
Additional Benefits of a Patentability Search
Beyond just avoiding rejections, a novelty search adds value in other strategic ways:
- Investor Confidence: Demonstrates diligence and reduces perceived risk
- Licensing Leverage: Helps prove the value and uniqueness of your innovation
- Stronger Provisional Applications: Supports early filings with clarity and focus
- FTO Alignment: Supports early-stage Freedom to Operate assessments
Example:
An inventor planning to license their invention to a manufacturing firm used a professional patentability search to show that no similar inventions were on record. This helped them negotiate better royalty terms.
Frequently Asked Questions (FAQs)
- Is a patentability search required by law?
No, it's not legally required. But it’s highly recommended to reduce risk and improve your chances of success. - How long does a professional patentability search take?
Usually 5 to 10 business days, depending on the complexity of the invention. - Can I perform a patentability search myself?
Yes, using tools like Google Patents and USPTO databases. But accuracy may be limited without experience. - How much does a professional search cost?
Depending on the scope and industry, it ranges from $300 to $1,500. High-complexity searches may cost more. - What if I find something similar to my idea?
You may still be able to file, especially if your improvement is non-obvious. A patent attorney can help refine your claims.
Conclusion: Make Patent Search Your First Step
A patentability search is a crucial filter between a great idea and a successful patent.
It protects your invention from wasted effort, strengthens your patent application, and gives you a clearer path forward.
Skipping it increases the risk of rejection, legal issues, and business setbacks.
Whether you’re a solo inventor or leading an innovation team, this is a step you can’t afford to ignore.
Ready to protect your invention the smart way? Start with a professional novelty search today.
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