Need of Patentability Search before Filing a Patent

Inventors don’t need to search the prior art before filing a patent application on their invention. So why one must invest time and money on a patentability searches? Patentability search identifies prior art references that are relevant to the patentability of an invention. Search results include published patents, both US and foreign, as well as non-patent literature such as scientific journals and papers.

It is helpful in estimating the scope of patent protection the Patent Office may grant for your invention. This search helps to confirm if the prior art teaches about your invention’s concept, this determine the scope of the patent. Also, if some prior art references disclose one or more features of your invention, then the attorney must limit the scope of the claims while drafting. Hence, the patentability search helps the attorney of a patent application in claiming and highlighting the true novelty of the invention.

It is obvious that cost of the patentability search is 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 novel or not. 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 is wasted.

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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