There is no law or rule requiring an inventor to determine whether their invention is patentable
before filing a patent application. In fact, filing a patent application and receiving an examination
from a patent examiner at the US Patent and Trademark Office is the only sure way to find out if
your invention is patentable. However, there are some limited situations in which it may be
advisable to perform some amount of patentability search and analysis prior to making a
decision to prepare and file a patent application.
What Is a "Patentability" Search?
A patentability search is a process of identifying publicly available information about the state of
the art relevant to your invention as of the filing date of a patent application. Publicly available
information, which is commonly referred to as "prior art", may be obtained from a broad range of
sources. For example, prior art may include issued US patents, published US patent
applications, issued patents and published applications from any country of the world, any
document or page of a website accessible over the Internet, textbooks, journal articles,
magazines, published research reports, and anything else that has been made widely available.
In addition, prior art may include information about an inventor's own activities regarding the
subject matter of the invention, such as a public use of the invention and an offer to sell a
product or service that incorporates the invention. A prior art “reference” is any document
containing information that was publicly available prior to the filing date of a given patent
application.
As a practical matter, a patentability search is often limited in its scope. For example, it may be
reasonable to limit a patentability search to a few select online databases. This approach may
be the most cost-effective approach. However, the databases that are selected may vary based
upon the subject matter of the invention. For example, since the United States is a major
source of electronic device development and a major market for electronic device sales, US
patent databases are a good place to search for a new electronic device invention. Accordingly,
a patentability search for a new electronic device may be suitably limited to the patent
databases at the US Patent and Trademark Office and/or a Google Patents search, which
includes more than just US patent documents. However, inventions related to, say, production
of oil from tar sands are more commonly developed and used in Canada, such that a
patentability search for an invention related to tar sands should definitely include a search of the
Canadian Patent Office database. But recognize that any limitation in the scope of the
patentability search means that you may not identify some prior art that is relevant to the
invention and potentially material to patentability of the invention.
Reasons to Perform a Patentability Search
While some companies may perform a patentability search as part of their normal procedure for
determining whether to file a patent application on a particular invention, other companies may
be just as intentional about avoiding any patentability search during the development of an
invention and filing of a patent application. Either of these policies or procedures is perfectly
fine. However, inventors, their patent counsel and anyone else involved in the prosecution of a
patent application has a duty to disclose any information that a patent examiner might find to be
material to patentability of a patent application directed to the invention. Accordingly, any
information obtained because of a patentability search should be either submitted to the USPTO
in an information disclosure statement (IDS) or at least evaluated for submission. If an inventor
or other person involved in the prosecution is aware of material prior art, failure to submit that
material prior art to the USPTO may leave any resulting patent subject to potential invalidation
on the basis that the inventor or other involved person failed to live up to their duty of candor to
the USPTO.
Reason 1: The Inventor Is New to The Subject Matter of The Invention
I sometimes recommend a patentability search in situations where the inventor does not have
much experience in the field of the invention. In my patent prosecution practice, it frequently
happens that an inventor has become frustrated with a problem that is a common experience
among a large group of people. For example, many people have had the experience of driving
a car behind another car that is applying their brakes. The illumination of brakes lights
communicates the fact that the other driver is applying the brakes. However, brakes lights are
either on or off and do not convey any information about how hard the brakes are being applied
and how rapidly the car is decelerating.
Because this is a widespread common experience, there have been numerous attempts to
design brake light systems to inform adjacent drivers about the rate of deceleration and, as a
result, there is a lot of prior art dealing with these systems. So, I would typically suggest a
patentability search for an inventor that has no formal experience working in the field of the
invention. However, if the client was a microbiologist or an environmental engineer and the
invention was the result of applying their technical expertise in this field, then I might not feel
that a patentability search was particularly helpful.
Reason #2: The Inventor Needs Investment to Develop the Invention Into a Commercial Product
Even if the inventor has substantial experience and expertise in the field of the invention, a
patentability search may be useful if the development of the invention into a commercial product
or new business enterprise will require a significant investment of money. While some invented
products may be produced in small quantities in the inventor’s garage with existing equipment,
other invented products may require new facilities and expensive technology to even make the
first batch of the invention. In the later situation, a rational investor may want to see evidence
that there is a high probability of the invented product being patentable. The results of a
patentability search may provide that evidence. For example, an individual that is experienced
in performing patentability searches may essentially duplicate the same search process that a
patent examiner will perform after a patent application is filed. A patent attorney may review the
search results and apply the teachings of the prior art in the search results to the invented
product in view of the patentability standards. A thorough patentability search report may
document the findings and conclusions of this process so that an investor may understand the
potentially patentable features of the invented product, if any. While the results of a patentability
search and the conclusions of a patentability search report are not perfect and require several
assumptions and qualifications, the insights provided by this research may assist an investor in
determining whether to invest. After all, an issued patent provides the patent owner with the
right to exclude others from making, using and selling the patented invention for a period of up
to 20 years from the date of filing, subject to the timely payment of maintenance fees at three
times during the life of the patent. This exclusivity can yield high returns on investment.
What to Do with The Results of A Patentability Search
As suggested above, the results of a patentability search may be used to convince an investor
to invest in a company that owns the rights to the invention. However, patentability searches
and patentability search reports are not perfect and there is always the possibility that material
prior art is not located in the search or that the implications of certain prior art is not fully
appreciated at the time the report is prepared. For these reasons and others, I view the
patentability search as a better tool for ruling out patentability (a negative determination) than for
supporting patentability (a positive determination). Accordingly, the primary objective of a
patentability search and opinion may be to determine whether we can quickly rule out
patentability. If a prior art reference disclosing the entire invention can be quickly identified,
then the inventor can avoid the expense of preparing and filing a patent application.
Accordingly, the investment in a patentability search may have a high return on investment.