Need of Patentability Search before Filing a Patent


Patentability search Inventors are not required to search the prior art before filing a patent application on their invention. So why would an inventor wish to spend time and money on a patentability searches.
Patentability search (also sometimes known as Novelty Search) identifies prior art references that either alone or in combination are relevant to the patentability of an invention. Search results may include published applications and issued patents, both US and foreign, as well as non-patent literature such as scientific journals and papers.

Patentability search is helpful in estimating the scope of patent protection the Patent Office may grant for your invention. Patentability search helps to confirm if the prior art teaches about your invention’s generic concept, based on which a call may be taken if the broader concept of the invention may be patentable. Also, if, in the patentability search, some prior art references were identified which disclose one or more features of your invention, then that may help the attorney to limit the scope of the claims while drafting. That is, in general, the patentability search helps the attorney of a patent application in claiming and highlighting the true novelty of the invention.

It may be understood that the cost of the patentability search is most often recovered by reducing the risk of expending effort and money on an invention that is not new. Generally, patent office does not initiate examination of patent for at least one year. So, in absence of patentability searches, you would have no idea if your invention is new and non-obvious in order to be able to get a patent grant. Say, in this time, you may choose to further develop the invention, including developing prototypes, marketing, manufacturing, etc. Finally during prosecution, the examiner may be able to find some reference(s) which teaches about your claimed invention. In this case, all your effort and money spent so far would be kind of worthless.

Patentability searches is important to mitigate such unnecessary risks. Further, patentability search helps to draft better claims and specification in the patent for the invention, so that there may be minimum prosecution and quicker grant of the patent. Therefore, prior to committing the resources of time and money to the preparation and filing of a patent application, it makes good sense to first undertake a patentability search.

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