When to perform a Patentability Search


In patentability search without understanding of the prior art, it is difficult to draft novel claims with the appropriate scope. In other words, the patent attorney may not be able to point out what is novel about an inventive concept without an understanding of the previous work.

Role of Patentability Search:

Here comes the role of patentability searches. Ideally, the Patentability Searches will locate the prior art that an Examiner would have asserted in a first office action. With such prior art in hand, the patent drafter can draw up claims that distinguish the present invention from the prior art, which may lead to a better set of claims being allowed at an earlier date.

Thus, the Patentability Search speeds patent prosecution by allowing claims to be tailored to avoid the prior art before the Examiner’s own search. Whether such prior art is actually found depends partly on how much time is allocated to the Prior Art Search and on the skill of the searcher.

The patentability searches is useful prior to preparing and filing a patent application. The results will help determine whether to pursue patent protection and may indicate what
issues could arise during examination.

Performing a patentability search first before filing the patent application is always suggested.  By performing a patentability search, the inventor may be able to determine whether it makes sense to move forward and what protection for his/her invention, if any, could be possibly obtained. A patentability search helps the inventor to explain his/her invention in a way that highlights the important differences that exist over the prior art and emphasizing the true novelty of the invention.

The patentability search also helps the writer of the patent application construct claims to achieve the broadest possible protection without treading on the known prior art. In others words, the patentability search helps to locate relevant patents and publications that helps the patent attorney/agent who will be writing the claims of the patent application for the invention to understand the limits of possible protection that could be targeted.

Therefore, it makes good sense to first undertake a patentability search, prior to committing the resources of time and money to the preparation and filing of a patent application. Unfortunately, the patentability search is not without its limitations. It is useful, therefore, to examine the search process carefully and judicially so that its value and shortcomings can be appreciated.


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