Why Do a Patentability Search? 6 Reasons to Explore Patentability

To patent an invention, it must be novel, nonobvious, and useful; securing a patent for your technology is expensive, at approximately $56,500 for small entities. Going through the long, costly patenting process, in addition to R&D, only to be denied a broad, useful patent is not a sustainable approach to IP. If your organization can improve the chances of procuring a strong, valuable patent, you’ll likely take it. You need to understand the patent landscape and the patentability of your invention—before you allocate significant R&D resources or file a patent application.

When you file your patent application, the USPTO (or any other patent office) will look for highly similar prior art. You don’t want the results of this search to be a surprise. Of course, no search you or your external search partner do will uncover every piece of prior art your patent examiner may find. Patent applications don’t become publicly available for 18 months after filing, the landscape of fast moving industries is constantly changing, and keyword-based searches have limitations (although the natural language processing capabilities of AI-based search engines like InnovationQ+™ do mitigate this challenge).

However, you want to minimize the chances of your patent examiner finding patent or nonpatent literature that could impact your ability to protect and monetize your invention with a strong patent. Conducting patentability searches both early and often gives your company insight into its ability to patent a specific invention.

A comprehensive patentability search allows your organization to:

1. Identify knockout art and, therefore, prioritize novel ideas.
2. Iterate on promising ideas to differentiate them from prior art.
3. Write strong patent claims that showcase novelty.
4. Meet the USPTO’s “duty to disclose information material to patentability.”
5. Reduce office actions and get to market faster.
6. Mitigate litigation risk. (However, a patentability search does not replace a freedom to operate search).

IP.com recommends patentability searches during early-stage innovation and before filing (based on drafted claims). With foresight, you can determine whether or not an idea is worth pursuing or patenting before dedicating precious resources to it. Sometimes, an invention would likely not be granted a strong patent and is therefore not worth the investment of patent protection. In this situation, defensive publishing in a database like IP.com’s Prior Art Database (PAD) may be a cost-effective IP strategy.