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Does a Patentability Search Really Determine Patentability?

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Director of Patent Searches & analytics

It is universally accepted that there are three essential criteria to be satisfied for a patent to be granted, namely novelty, inventive step (also known as non-obviousness) and industrial applicability. At the point when an inventor begins exploring the patentability of his invention, his legal counsel will typically suggest that he engage a patent search provider to conduct a patentability search.

Although the inventor is interested in determining – with certainty – whether his invention will receive a granted patent, it is recommended that the counsel curb that expectation since, in reality, a patentability search does not have such a power.

Generally, the patentability search will be performed based on an Invention Description, and analysis of the search report will evaluate whether the invention is novel and inventive over the search results. While in theory, this appears to be a relatively sound method of ascertaining patentability, by looking beneath the surface it becomes apparent that it is not foolproof.

First of all, this is because the patent examiner considers the patent Claims, which are as of yet unwritten at the time of the patentability search, not the Invention Description, to determine patentability.

Additionally, the requirements of novelty and inventive step have ‘transcendent’ characteristics, in that they are not bound by the restraints of time or space.  Thus, irrespective of where or when a relevant publication is found, it could affect patentability.  The publication could be from the preceding day or many decades ago; it could be published in the local newspaper or found on the other side of the world. If it can be accessed publicly, it will be considered prior art.

To further complicate matters, there is no single repository for all publications since the dawn of time that could be searched for relevant prior art. Consequently, using a pre-filing patentability search to ascertain whether an invention is truly patentable is effectively impossible.

Viewing a patentability search through this lens means that an inventor can never receive a guarantee at this early stage of the process that an invention is patentable. If their legal counsel cannot provide such an assurance even after a patentability search is performed, then we must reassess what indeed the patentability search seeks to achieve.

Instead of determining patentability, the primary goals of a patentability search are to:

  • Mitigate/Reduce Risks – Entering the examination process without first performing a professional patentability search is like walking down the street blindfolded. The risk of bumping into prior art during the examination is high, and the inventor will be unprepared.
    With a patentability search, the inventor will become aware of prior art early on, which a competent patent examiner would likely have discovered during the examination process when is too late to make the necessary amendments to the patent application.
    By opening his eyes to the potential pitfalls of the prior art before the patent is filed the inventor will be prepared to respond to the examiner’s objections with confidence.
  • Guide Decision Making – a patentability search should help an inventor evaluate the relevance of the prior art, how potential objections can be overcome, and even guide decisions such as whether to proceed with the project any further. Having good quality information and sensible advice from a patent attorney can save valuable time and money. Additionally, a clean patentability search can help an inventor secure investment and funding.
  • Assist in the Drafting Process – The patent attorney will learn the terminology of similar technology and will ensure that the drafting of the patent is focused on the inventive aspects and not on features already disclosed or covered by the prior art.

Another benefit of a patentability search that is often overlooked is that its results can be helpful when performing other types of patent searches at later stages of the patenting process or product development.

For instance, a Freedom to Operate (FTO) search, which will highlight granted patents that are in force in specific regions of interest, can utilize the results of the patentability search as a starting point to assess whether commercial actions in respect of the product or service offering would infringe any of the identified patents.
Even though an invention may not be patentable, an investment into the commercialization of a given invention may still be a worthwhile question to consider, depending on the goals, business trajectory, risk tolerance and financial resources of the inventor.

In summary, while a patentability search may not offer the inventor the solution to the question that he is seeking to answer (i.e., will my invention be patented?), it still provides critical information to the parties involved.
The search results supply immediate resources for both the inventor and the patent attorney to determine whether to continue along the patenting process and if so, how to best draft the patent application.  At the same time, the search results can be exploited at a future date for additional searches and decision-making.

Most importantly, the advantages and shortcomings of patentability searches should be presented to the inventor at the outset so that expectations will be met and the attorney and client will be in sync with how to best move forward after the search is complete.

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