Chaim StepelmanDirector of Patent Searches & analyticsAzami Global
Understanding the Limitations and Benefits of Patentability Searches
When inventors begin exploring the patentability of their invention, they usually engage a patent search provider to conduct a patentability search. While the purpose of this search is to evaluate whether the invention is novel, non-obvious, and industrially applicable, it cannot guarantee patentability.
This article will help you understand the benefits and limitations of a patentability search and how it helps reduce risks, guide decision-making, and assist in the drafting process.
Patentability Criteria
Before we dive into the details of a patentability search, let’s briefly recap the essential criteria for patentability.
A patent can only be granted if the invention is:
- Novel: not disclosed anywhere in the world before the filing date of the patent application.
- Inventive step: not obvious to a person skilled in the art, based on the existing knowledge and technical advancements.
- Industrially applicable: capable of being made or used in an industry.
Limitations of Patentability Search
A patentability search is based on an Invention Description, and its purpose is to identify relevant prior art that could affect patentability. However, the search cannot guarantee patentability for several reasons.
Firstly, patent examiners evaluate patent claims, which are not written at the time of the patentability search. Therefore, the search results may not reflect the actual scope of the invention.
Secondly, the novelty and inventive step criteria have transcendent characteristics, meaning they are not bound by time or space. Any publication that is accessible to the public can affect patentability, regardless of where or when it was published. However, there is no single repository of all publications since the dawn of time, making it virtually impossible to conduct a pre-filing patentability search that can ascertain patentability with certainty.
Benefits of Patentability Search
Although a patentability search cannot determine patentability, it provides several benefits that help inventors and patent attorneys mitigate risks, guide decision-making, and assist in the drafting process.
- Mitigate/Reduce Risks
A patentability search helps identify potential prior art early on, allowing inventors to prepare responses to patent examiners’ objections with confidence. This reduces the risk of encountering prior art during the examination process when it is too late to make necessary amendments.
- Guide Decision Making
A patentability search helps evaluate the relevance of prior art, overcome potential objections, and guide decisions, such as whether to proceed with the patenting process. Having quality information and sensible advice from a patent attorney can save valuable time and money. A clean patentability search can also help secure investment and funding.
- Assist in the Drafting Process
The patent attorney can learn the terminology of similar technology and ensure that the patent application’s drafting focuses on the inventive aspects and not on features already disclosed or covered by prior art.
Moreover, the results of a patentability search can be helpful in performing other types of patent searches, such as a Freedom to Operate (FTO) search. This search highlights granted patents that are in force in specific regions of interest and can utilize the patentability search results as a starting point to assess whether commercial actions in respect of the product or service offering would infringe any of the identified patents.
Conclusion
While a patentability search cannot guarantee patentability, it provides valuable information that helps reduce risks, guide decision-making, and assist in the drafting
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