Many inventors start the process of obtaining a patent by having a patent application drafted after they have honed their idea into a well-detailed description of the invention and all its variations and implementations, skipping the stage of requesting a professional search. However, in considering what is the meaning of an “application” for a patent, it is useful to view it at its most basic components. Besides recording the inventorship and date of filing of a patent disclosure, a patent application places the application in a queue for examination. Such examination is nothing more than a patent-office examiner performing a prior-art search based on the protocols of the patent office’s jurisdiction.

Wouldn’t it be useful to know the results of such a search before even filing an application? One could then modify the disclosure in view of the prior art that was discovered to clarify the invention, resulting in easier prosecution. In some cases, the search may uncover enough prior art to make the inventor reassess the value of filing an application altogether, saving a lot of money and time in the process.

A patent applicant needs to consider whether the innovation is a patentable invention. To assess the basic criteria of novelty and non-obviousness/inventive step, a patentability search needs to be performed. This involves searching various databases (usually patent databases including the databases of the United States Patent and Trademark Office (USPTO), the World Intellectual Property Organization (WIPO), the European Patent Office (EPO), and the Japan Patent Office (JPO)) for prior art related to the innovation. Qualified professionals (such as patent practitioners and search analysts) are familiar with the process of refining search strategies to produce high-quality results. Anyone can perform a search, but the search results are only as good as the analyst’s strategy.

A patentability search enables an inventor to decide at an early stage whether it is worth pursuing patent protection for an innovation. Such a search also serves as a basis for the patent drafter to construct the strongest (with regard to enforceability) and broadest claims that the patent drafter considers allowable given the prior art found. A patentability search can also play an important role in due diligence and patent valuation.

In some cases, it is not clear whether a prior-art reference found in a search creates patentability issues for securing patent rights. In such instances, a patent practitioner should be consulted to determine whether a legal patentability opinion is necessary. Contact us to find out more about FPIP patent searches.