Many inventors start with the patent-drafting process for obtaining a patent 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 patentability 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 patent search based on the protocols of the patent office’s jurisdiction, and conducting a patent analysis.
Wouldn’t it be useful to know the results of such a patentability search before even filing an application? One could then modify the disclosure during patent drafting in view of the prior art that was discovered to clarify the invention, resulting in easier prosecution. In some cases, the patentability 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. For a patent valuation analysis firm, a patentability search serves as a key metric in assessing the potential worth of a patent.
If your business is currently involved in deciding to file a patent and whether to conduct a patentability search, learn how our patent valuation analysis firm and patent prosecution firm can help you achieve the results you’re looking for.
A patent applicant needs to consider whether the innovation is a patentable invention – the essence of which is based on a patentability search. To assess the basic criteria of novelty and non-obviousness/inventive step, a patentability search needs to be performed prior to filing an application in order to maximize value. 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. This is one of the reasons that a patent valuation analysis firm will only rely on professional searches, even then being discerning on the relative quality of the results.
A patentability search enables an inventor to decide at an early stage whether it is worth pursuing patent protection for an innovation. Such a patent search also serves as a basis for the professional performing the patent drafting to construct the strongest (with regard to enforceability) and broadest claims allowable given the prior art found during the patent-drafting process. A patentability search can also play an important role in due diligence for a patent valuation analysis firm.
In some cases, it is not clear whether a prior-art reference found in a patentability 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.