What is a Patentability Search?

When filing a patent, there are several steps to the process. Most people focus upon the procedural steps of filing with the United States Patent and Trademark Office (USPTO). There is one major step to take prior to preparing your patent application. You should always perform a patentability search.

A patentability search is broader than performing a search for prior patents or patent applications. Though completing a patent search is part of the patentability search, the patentability search focuses on identifying anything that could cause the patent application to be denied.

As such, it is important to understand the various attributes required for an invention or design to patentable.

What is Required to Secure Patent Protection in a Design or Invention?

A utility patent provides an inventor with protective rights regarding a process, machine, article of manufacture, or composition of matter. A design patent provides protection of the aesthetic elements of an invention. For purposes of this article, we focus upon the utility patent.

These types of invention are known as patentable subject-matter. Things that fall outside of these categories of subject matter may be too abstract or theoretical to apply a utility patent.

A utility patent application makes certain claims about the invention. These claims identify specific aspects of the invention that meet the requirements for patent protection. The requirements for a claimed element to be protectable by patent are:

• Novel - The claimed element of the invention must be new. This means that it must not have been previously disclosed to the public. Disclosing something to the pubic includes:

⁃ The claimed item is already being sold or offered to the public for purposes other than testing or development.

⁃ The claimed item has been the subject of extensive disclosure, such as through description in a trade publication.

⁃ The claimed item item has not previously been the subject of a patent filing in the United States or other country.

• Non-Obvious - The claimed item cannot be an obvious concept in the context of the invention. That is, it must not be already commonly understood by experts in the field. Experts in the field are known as Persons Having Ordinary Skill in the Arts (PHOSITAs).

• Useful - The claimed element must perform some identifiable function or purpose. Note, the function must have some effect or result. It does not matter the value of the function or result.

A utility patent application may make numerous claims for protection. That is, it can identify numerous aspects of the claimed invention that meet the requirements for patent protection. The can be multiple stand-alone claims, or a claim can have numerous sub-claims (or dependent claims).

Searching for Prior Disclosures?

What you should take from the above information is that your invention must not have been previously disclosed to the public. This means that you are going to have to undertake a comprehensive search of inventions that have been disclosed but may not have been the subject of a patent filing. Here are some steps for you to undertake to search for prior disclosures.

• E-Commerce Websites - Many types of inventions were created for sale to the public. As such, the first step should be to actively search internet commerce sites. Amazon and Ebay are likely the mostly widely recognized E-Commerce sites within the United States. If you want to search internationally, you may be able to search the English versions of AliBaba. Make certain not to skip any steps in searching through the entire product line. You may also want to perform independent searches for similar inventions and their earlier models. This can produce a treasure trove of results for similar items. Of course, you can search catalogs from companies that may not provide a complete list of their product offerings on the internet (other than in downloadable PDF format anyway).

• Product review websites - Just because you cannot find a similar invention on public websites does not mean it does not exist. Also, it could be possible that any company or personal websites containing a similar invention does not rank in a Google or Bing search — thus, you don’t find it. An alternative option is to search for consumer comments and review. The internet is fully of websites where individuals review products. Conducting thorough searches of these types of websites can produce all sorts of designs that may not be present in patent databases. The best practice is to search for products in a particular field or function.

• Crowd Funding Websites - Many products invented by individuals not affiliated with a company may be very difficult to find. Some of the most novel inventions never see the light of day because of lack of available funding to produce the item. This had changed in recent years with the rise in crowdfunding sites. Crowdfunding sites contain a directory of products that may have never made it to larger commercial website or store shelves. Nonetheless, these inventions may conflict with a present application. The most popular sites are KickStarter and IndieGogo.

• Manufacturer Websites - As discussed above, searching through a manufacturer’s product line may reveal prior art that can conflict with patenting an invention. Also, companies will often prototype a product in various forms before finalizing an invention. Simply drafting design documents for a prototype and disclosing them publicly can have the effect of invalidating an application for protection of an invention. Thus, it is necessary to search for existing prototypes. For example, if you go to a car company’s website, they will often reveal the designs for concept cars. These designs may have the effect of disclosing an invention to the public. As such, searching the websites for manufacturers (particularly overseas manufacturers that have a catalog of product designs) can reveal similar designs that may invalidate a patent application for lack of novelty.

Searching and identifying prior disclosures of an invention is difficult. It requires lots of trial and error to identify appropriate search terms and locations for search. Even if your searches come back empty, it does not mean that there is no prior art that would disqualify a patent application.

Now that you understand the limitations on what is patentable subject-matter and the attributes necessary for an invention to patentable, you can begin the search for prior patent filings.

Searching for Existing Patents?

The final piece of a patentability search is to search for prior patent filings. Doing a patent search is a very complicated process. It requires searching for patent applications, granted US patents and granted international patents. Generally, the process for doing a patent search takes place over the internet. You can pay a legal professional to perform a targeted patent search. If you are looking for a cheaper option, you can pay patent search companies to search for similar inventions. The problem with this approach is that the search is generally less thorough. These companies make no assurances of their search results. So, hiring them is often not worth the reduced price. Lastly, you can conduct a patent search yourself.

To conduct a patent search yourself, you must become familiar with the available resources. For example, some of the most notable free resources include: Google Patents, The USPTO patent databases, Espace Europen Patent Database, and Patentscope - the World Intellectual Property Organization database. There are a number of paid databases, but these are generally more useful for professional patent searchers who have a strong understanding of the unique features offered by these search engines. Also, you need to become familiar with the various methods for searching for a patent. Patents and patent applications are indexed by a number of patent search factors. These include technical keywords, name of inventor, company, time period, geography, whether granted or denied, combined patent classification code (CPC), areas of technology, patent application number, prior art citations, etc. Each of the above-mentioned, patent search engines provides unique features for patent search.

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