In this article, we will put our views on patentability search basics- what is it, why it should be done and some other general queries regarding it. No patent law requires you to conduct a patentability search or patent novelty search. But, this is however the first and often the most important process that should not be omitted.
Patentability Search Basics
A patentability search or patent novelty search is a search of the prior art (pre-existing inventions or products or knowledge) conducted before filing a patent application. After a U.S. non-provisional patent application is filed, the patent examiner at the Patent Office conducts a search to find out the whether the invention or product can be granted a patent. You may be thinking, then why should I do a patentability search if the patent office will be doing itself? A patentability search before filing a patent application is necessary to find out the novelty of the invention. Otherwise there will be a waste of time and money for preparing, filing, and prosecuting a patent application on an invention which cannot win a patent. A patent search result enables a patent attorney or a patent professional to draft an efficacious patent application.
Motive behind the Search
The main aim is to find out whether an invention is completely new. For a patent to be granted an invention should not have any resemblance to previous inventions or products belonging from same or different field. If a prior art or prior patent discloses your invention in every minute detail, then the invention is unlikely to be patentable. Thus a prior-art search or a patentability search helps to determine the novelty of an invention or product.
The result of a patentability search can be positive (an invention or product is likely to be patented) or negative (patenting the invention or product is not possible on grounds of novelty, non-obviousness). A positive result for a patentability search allows the applicant to proceed for application preparation, filing, and prosecution. On the other hand if the search result is a negative one, then the money spent for the patent application would not be worth it.
Patent Clearance Search
A Patent Clearance Search or Freedom-To-Operate Search establishes whether any enforceable patents might be a hindrance to an invention or product before is launched in the market. This search is done to ensure that new or planned products can be brought to market without any fear of litigation from existing patent-holders or where a product can be legally operated. An Infringement search is more streamlined as it is conducted in the target country where the product will be marketed.
Patentability Search versus Patent Clearance Search
It is really important to understand Patentability Search basics to answer the aforementioned question. A patentability search is conducted to find out the novelty of an invention. In simpler words, it is done to find out whether the invention or product to be patented is already present in the market or known to public through previous prior-art searches. Patentability Search by no means targets to find out whether the commercialization of a product would infringe any existing patents. In this article we are primarily focusing on Patentability Search.
Do I need to conduct a search even if my product is unavailable in the market?
The answer will always be a yes. A product is unavailable in the market does not guarantee that it will be granted a patent. Whether a product is new or not can be determined either by selling the product in the market or by applying for a patent application of the intended product. The Patent Office is filled with countless number of patents and patent applications. Some of the products which are disclosed may not be commercially sold in the market. Thus, even if a product is not present in the market, it necessarily does not mean that the product or invention will be new. So before launching a product in the market or before applying for a patent application, a proper prior-art search is absolutely necessary.
A question like this may arise- if a product is not available in the market, why would there be a patent application for it? Due to several reasons, a patented product might be unavailable in the market. They are as follows:
- Insufficient funds leading to a stop in development of the product.
- Inability to find the right path of trade
- A lack of consumer interest in the product leading to less or no publicity
Can I conduct a patent search on my own?
Definitely you can conduct a patent search all by yourself. You can visit the website of United States Patent and Trademark Office (USPTO) and follow the guidelines as stated. In this way you will end up saving the cost of hiring a professional patent searcher. However, a professional patent searcher with his experience, access to search tools, and knowledge of searching techniques provides an authentic result in situations when it might be difficult or easy for an individual to establish the patentability of an invention.
Will I definitely get a patent after conducting a patent search?
The simple answer is no. A patent search confirms that an applicant can go ahead and proceed with the patent application. However there can be existence of several non-public prior-arts which will act as a roadblock to obtaining patents. U.S. patent applications are not publicly disclosed before 18 months from the date of filing of the application. Therefore, there might be instances where somebody with a similar invention has filed an application one month before your filing. In this scenario, the later application will act as a prior-art to your invention; it will not be disclosed before 18 months from its filing date. As a result, your invention will face hindrance and cannot be patented.
You may think then what is the point of doing a patent search? It is a reasonable step that ensures no prior-art exists that can be similar to your invention or product. It helps you confirm that publicly disclosed or undisclosed patents or patent applications will not act as a blockage to your patent application.
How the value of a patent is determined from the results of a patent search?
This question is a bit difficult to answer as the value depends on a number of analyses. The most important values can be summed up as the following:
- A patent stops competitors or other rival entities from copying your idea (N.B- an idea is not patented, a product or invention is)
- The extent till which other companies will be interested in paying license to manufacture or use the technology of the patent
- The scope till which other customers, inventors, financial institutions are impressed by your patent
A patentability search helps to determine whether a product or invention can be patented or not. It also defines the scope of patent protection that an inventor or applicant will gain or achieve.