Patentability Search: Why You Need to Look Beyond Major Patent Offices


Is your invention unique enough to warrant a patent? Searching databases from the U.S. Patent and Trademark OfficeEuropean Patent Office, and other government organizations may not be enough to determine the novelty of your product, process, or technology. There’s a vast amount of non-patent literature that will have an impact on your decision to pursue a patent.

That’s why a broad patentability search is a critical step in an effort to protect your innovations. A patentability search will help you to discover and identify not only the granted and published applications of major patent offices, but any and all prior art related to the innovation published in the United States, Europe, Asia, as well as any of the 148 participating countries in the World Intellectual Property Organization (WIPO)’s Patent Cooperation Treaty (PCT). For example, the inventor of a new optical system for a medical device would want to search a variety of relevant sources, such as the International Society for Optics and Photonics, journals from the Optical Society of America, the IEEE (one of the most important non-patent literature sources) and other physics journals.

We recommend that companies conduct patentability searches at two key points in the patenting process:

At the ideation stage. You should perform an initial search that discloses the basic concepts of your invention. This “enabling embodiment” describes the novel aspect of the invention and its application. The description, which may include drawings or diagrams, should be described in a way that anyone skilled in the domain could reasonably reproduce it. A search should cover both patent and non-patent publications, with no limit to when something was published. You’re looking for any information that tells you the invention in its current form is unlikely to be patentable.

At the pre-filing stage. The ideation disclosure will form the basis for the patent application. Reviewing the findings will allow your patent attorney and engineers to make any adjustments to the invention that should improve the likelihood of a granted patent. Using this more detailed description, a second, more extensive search will help you to pinpoint citations of any issues related to prior art that could be problematic.

A patentability search will position your patent application to pass two tests: Novelty and obviousness. Most corporations will pass the novelty test, but many get tripped up with the “obvious” test – which considers whether another entity could reasonably combine existing prior art to create your invention. For example, would it be obvious to an electric engineer to put a camera in a cell phone? If the answer is yes, the patent is typically denied.

Want to learn more about patentability searching? Drop us a message and we can help.