As soon as an inventor has a new idea, the question at the forefront of everyone's mind is whether it can be patented. A patentability search exists to provide an answer to that question by screening whether an invention is novel and non-obvious relative to what currently exists. The process entails searching prior patents, applications, and technical publications to decide if filing a patent application is the worth pursuing.
A good patentability search will save inventors time, money, and effort. It can also make a patent application stronger by identifying what exactly is novel about an invention. In this article, we will discuss the process of conducting a patentability search, include examples, mention typical pitfalls, and cover frequently asked questions.
What Is a Patentability Search?
A patentability search is an organized probe into published patents, pending patents, and non-patent literature to find out whether an invention is novel. Patent offices such as the USPTO, EPO, and WIPO apply the same principle when they are examining applications but it can be advantageous for inventors to do this search prior to filing.
For instance, if an inventor creates a new smartphone case that can cushion against drops as well as water damage, a search would uncover if the cases already exist.
The result of the search will tell whether the idea can proceed, requires alteration, or possibly is not patentable at all. Such a search will not automatically lead to approval, but it gives very useful information about risks and possibilities.
It allows inventors to scale back claims, sharpen features, or investigate different protection options prior to investing considerable resources.
Why Do a Patentability Search?
Forgetting to do a patentability search is dangerous. Without it, inventors can submit an application that will be rejected, causing wasted filing fees, attorney charges, and lost time.
A quality search provides three significant advantages:
- Cost Savings – Filing fee and attorney fee can be expensive. A search saves money by avoiding follow-through on inventions that will not work.
- Risk Reduction – Finding prior art upfront enables inventors to make changes to their invention prior to filing.
- Strategic Insights – Searches uncover competitor activity, possible licensing prospects, and technology gaps that can be used by inventors.
For example, a medical device company can discover that multiple patents already exist for similar mechanisms. Rather than shelving the project, they could refine their design to target a neglected feature, which raises the chances of patent approval.
Major Steps in a Patentability Search
Step 1: Awareness of the Invention
The search starts with an unambiguous awareness of the invention. Inventors are encouraged to make detailed notes and sketches, describing what the invention is, how it functions, and why it is novel. The more precise the definition, the simpler it is to look for applicable prior art.
For instance, an inventor who develops a solar-powered backpack with integrated charging points should define not just the solar panels but also such things as weight distribution, water resistance, and energy efficiency.
Step 2: Locating Applicable Keywords and Classifications
Keywords and classification codes are the foundation of a search. Inventors should think of alternative descriptions for their invention, such as synonyms, technical jargon, and industry terminology.
In parallel, searching International Patent Classification (IPC) or Cooperative Patent Classification (CPC) codes makes sure the search is done according to how patent examiners classify inventions.
An easy example: A "wireless charging pad" could also be indexed as "inductive power transfer device." Neglecting that alternative phrasing may lead to missing important prior art.
Step 3: Patent Database Searching
The second step is patent database searching. USPTO, WIPO (PATENTSCOPE), EPO (Espacenet), and Google Patents are popular. Results can be filtered by keywords, classifications, dates, inventors, or companies by inventors.
But searching should not end with patent databases. Non-patent literature like research journals, conference proceedings, and technical reports may find prior art affecting patentability. For instance, a published university report on a novel battery layout can preclude a patent application, even without a patent.
Step 4: Examination of Prior Art Results
When results are obtained, the difficulty is in examining them cautiously. It is not sufficient to identify inventions that resemble each other. Even inventions with intersecting functions or minor similarities can affect patentability.
For instance, if an inventor develops a new kind of drone with sophisticated navigation, existing art disclosing drones with equivalent stabilization systems could be sufficient to challenge novelty or obviousness. The aim is to determine if the invention differs.
Step 5: Examining Patent Claims
Patent claims form the core of all patents. They determine the legal scope of protection. Upon a search, claims should be reviewed closely to determine if an invention is too similar to existing patents.
Independent claims are particularly noteworthy since they define the widest coverage. Dependent claims add specificity but are less apt to prevent a new invention. If overlapping prior art claims exist substantially for a new invention, filing might not be justified.
Step 6: Preparing a Patentability Report
Ultimately, conclusions are summarized in a patentability report. This report details relevant background art, examines overlap, and determines if an invention can be patentable. It tends to contain citations to patent documents and non-patent literature, along with descriptions regarding their relevance.
For inventors, this report is a decision-making document. It facilitates decisions on whether or not to file, broaden claims, or eliminate the idea altogether.
Examples and Case Studies
Example 1: Wearable Fitness Tracker
An entrepreneur came up with a new fitness tracker that monitored hydration levels. A patentability search showed several trackers tracking steps, heart rate, and sleep patterns but none that targeted hydration. This deficiency ensured novelty, and the patent application was subsequently granted.
Case Study: Electric Vehicle Charging Station
A startup invented a charging station with dynamic load balancing for several vehicles. In a patentability search, prior art showed the same stations but without the company's real-time adjustment algorithm. By highlighting this characteristic in the claims, the startup was able to file a successful patent and gain investor attention.
Mistakes to Be Avoided in Patentability Searches
Inventors tend to commit mistakes that reduce the efficacy of a search.
Some of the common errors include:
- Depending on a single database – Solely using USPTO can leave world prior art undone.
- Ignoring non-patent literature – Journals and technical articles can prevent a patent.
- Searching too narrowly – Searching for a single keyword can overlook synonyms and classifications.
- Skipping claim analysis – Skipping claims results in partial results.
- Rushing the process – A rush search tends to overlook important references.
Avoiding these errors provides a better basis for decision-making.
Frequently Asked Questions
1. How long does a patentability search take?
Depends on complexity, but most searches take between one and three weeks for complete results.
2. Can inventors perform their own patentability search?
Yes, inventors can utilize free databases such as USPTO or Google Patents. Professional searchers, however, tend to find more precise and comprehensive results through sophisticated tools and classification techniques.
3. Does a patentability search ensure approval?
No. Not even a comprehensive search can guarantee certainty about the decisions of examiners. But it substantially lowers the chances of rejection.
4. What is the distinction between a patentability search and a freedom-to-operate search?
A patentability search will determine whether an invention is new and patentable. A freedom-to-operate search will determine if selling the invention would infringe on current patents.
5. How expensive is a professional patentability search?
Prices are a function of complexity but typically a few hundred to a few thousand dollars. The investment frequently pays for itself many times over in savings on avoided filing fees and legal costs.
Conclusion
A patentability search is an important preliminary step towards the filing of a patent application. It allows inventors to determine prior art, narrow their ideas, and make informed choices regarding seeking protection. Through the steps of defining the invention, constructing robust keywords, searching databases, examining results, examining claims, and issuing a report, an inventor sets the stage for a more robust patent filing.
The process also gives strategic insights regarding competitors, industry trends, and potential areas of innovation. Whether conducted by yourself or with the help of professionals, a correctly done patentability search is an investment in the success of an invention.
Protect your invention's future by having a professional patentability search conducted. Contact InventionIP today to discover how our services can assist you in filing stronger, more successful patents.
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