Do you really need to do a patentability search? YES! Here’s why…
Pursuing a patent for an idea is an expensive endeavor, costing tens of thousands of dollars – and that is if you do everything right. Any bumps or roadblocks along the way will cost you more in both time and money. Do it right the first time around.
Remember, to successfully pass patent review, your idea must be new, useful, and nonobvious. You must be ready to defend your points of novelty, illustrate utility, and prove that your solution has not yet been conceived or discovered. Explain the aspects of utility by framing a case for enablement in your invention disclosure or patent application. Support the credibility of your novel claims and new discoveries with a thorough patentability search. As an inventor or assignee, your top priority is to secure protection for your intellectual property.
Five Reasons to do a Patentability Search
- Establish that you are not infringing upon existing patents. The fastest way to a lawsuit is to cross into someone else’s territory. Know the IP boundaries you are working with. Discover the most unique aspects of your invention while uncovering any dangerous patents that are already out there.
- Make sure no one else can infringe upon you. The flip-side of reason #1: set up the IP boundaries to keep the infringers out. Focus on the aspects of your idea that are most likely to contribute to patentability for you.
- Protect yourself from non-practicing entities (i.e., patent trolls). They are looking for broad claims and vague descriptions. See where you fit and make a solid claim to that space.
- Position your IP for power. Identify and understand what the competition is developing, the areas of opportunities, and how your solution is better than the current art.
- Make it easy for your application to make it through the stages of the patent review process. Know the prior art and anticipate the examiner’s objection/rejection, and then avoid it. Once an examiner rejects an application, it is hard to argue or amend past the rejection.
When to do a Patentability Search
- At the early stages of innovation (ideation). Before you invest too much time and money, be confident that you are on a viable path.
- Before you file a patent application, search based on drafted claims. Educate yourself.
- While preparing an SB/08 Information Disclosure Statement for the USPTO. Get the examiner to approve your citations!
Patentability Search Resources
For a patentability search, no amount of research is too much. You can dig in and do your own work or you can procure the expertise of professional searchers and analysts to gain not only information, but also insight. To search the largest collection of patent and non-patent literature using semantic, Boolean, or an innovative combination of both for powerful concept searching, check out IP.com’s InnovationQ. For full analytical reports on patentability, seek out an expert at IP.com.