Before filing a patent application, a patentability search may be appropriate. To understand the value of a patentability search, one must understand the requirements for patentability.
Numerous statutory requirements exist for patentability. Including an adequate written description, claiming patentable subject matter, and drafting the proper form and content of patent drawings are each legally complex and best addressed during preparation of the patent application.
A patent search focuses on two primary requirements worth discussing: § 102 novelty, also known as a lack of anticipation, and § 103 non-obviousness.
The patentability search process
A patentability search consists of four primary steps: 1) a discussion of the invention with the inventor; 2) an iterative search of the records of the Patent Office, using classification searching, keyword searching, and relational searching; 3) a review of the located prior art in light of the invention; and 4) a meeting and discussion with the client.
During the meeting the patent attorney or agent can predict whether the Patent Office will see the invention as novel and non-obvious, or the client should anticipate a struggle with the Patent Office.
Budgeting for a patentability search
A patentability search is an additional cost not included in the cost of a patent application. The benefits of a patentability search are two-fold: First, a search is less expensive than a patent application. Thus, if the search results show a low likelihood of patentability, an inventor may decide not to file the patent application. Second, the results of the search may change how a business owner decides to invest in a business. Given that the goal of a patent is to protect market share, a product that is unlikely to be awarded a patent may deserve less investment than a product that is likely to be awarded a patent.
An attorney or agent with Larson & Larson will be glad to discuss this in further detail.