Do you really need a patentability search?
Pursuing a patent is an expensive endeavor, costing tens of thousands of dollars. And that’s if everything goes smoothly! Any bumps or roadblocks along the way can cost you more time and money. A patentability search ensures you have a strong, patentable claim—the first time.
What is Patentability?
To successfully obtain a patent, your application must claim patentable subject matter. The three criteria for patentability are:
- Novel, or new;
- Useful, or credible and substantial; and
- Nonobvious, meaning it is not an obvious combination of prior innovations to “one of ordinary skill in the art.”
An inventor applying for a patent must be able to address these criteria with adequate written description and enablement. It’s also necessary to be ready to respond to patent office actions related to all patent eligibility criteria.
What is a Patentability Search?
A patentability search, also known as a novelty search or a prior art search, identifies related prior art to ensure an idea meets the criteria for patentability.
3 Reasons to Do a Patentability Search
Shorten prosecution. Claims drafted with novelty and nonobviousness in mind from the beginning shorten prosecution times and ensure the best prior art is made of record. A thorough patentability search examining relevant and related prior art makes it easier to draft an application more likely to make it through the patent review process. Familiarity with the prior art allows you to anticipate the examiner’s rejections.
Position your IP. As an inventor or assignee, your top priorities should be securing protection for your intellectual property and ensuring that your patent will hold up if challenged. Create a valuable market position with a claim that focuses on the most patentable and marketable aspects of your idea. A patentability search helps prevent unforeseen references from being discovered during patent prosecution or a future infringement case.
Analyze the landscape. The benefits of a patentability search are recognized long before you apply for a patent. Identifying which of your ideas are novel also offers insight into the technology and competitive landscapes as a whole. Use the search results to identify and understand what your competitors are developing, areas of opportunity, and how your solution is better than the current art.
When to Do a Patentability Search
To realize the full benefits of a patentability search, it should be completed at three points of the innovation process.
- Ideation: A patentability search during the early stages of innovation allows you to focus resources on viable ideas, before investing too much time or money on ideas that do not meet the criteria for patentability.
- Application: Before filing a patent claim, search all relevant prior art. A fully drafted claim allows you to search more thoroughly.
- Before Filing SB/08: The USPTO’s SB/08 Information Disclosure Statement requires inventors to list all “material,” or relevant, prior art. A patentability search helps uncover all prior art that should be included. A thorough SB/08 encourages the examiner to consider your citations and enhances the prosecution history.
Patentability Search Resources
IP.com offers inventors a unique approach to patentability searching. Our Technology Vitality Report (TVR) automates novelty scoring to rank ideas with efficiency and transparency. This technology allows you to perform a diligent pre-filing search while enabling you to fast-track novel ideas in a first-to-file world. For more in-depth insights into relevant technologies, InnovationQ® offers intuitive concept searching capabilities. For full analytical reports on patentability, seek out an expert from our Professional Services team.