Although not required by law, a patentability search is extremely helpful. For about 25%-50% of the cost, this type of search can assist the client and practitioner in assessing the likelihood of obtaining a patent on their idea, and thus is a valuable and necessary step in the patent process.
When the USPTO Examiner receives a non-provisional patent application, the examiner will perform a patent search on the invention as described in the claims, to determine its novelty. If the practitioner drafts the application without performing an initial search, there is no way to anticipate what is already in the public domain, or what the examiner will discover.
There are two main benefits to obtaining a patentability search prior to filing. First, it allows the client to research information that is currently in the public domain prior to preparing, filing, and prosecuting a patent application on an invention. If the information in the public domain completely anticipates the invention, then the patentability search will save the client thousands of dollars spent on drafting, filing, and prosecuting an application for which a patent would not likely be granted. The second benefit to obtaining a search is that it allows the practitioner to draft a stronger application for the client, thus increasing the chances of success in obtaining a patent.
Usually patentability searches are done by a reputable third party or possibly in house at larger firms. A description of the novel (new) aspects of the invention are clearly described, and depending on the scope and depth of the search, patents, publications, and all other types of prior art are searched via the USPTO, web and many other databases. Patentability searches can range from a basic knockout search to a comprehensive patentability search. The basic knockout search is the least expensive and covers the federal databases for patents and printed publications. The comprehensive search is more in depth (and expensive) and covers prior art references that either alone or in combination are material to the patentability of an invention. The comprehensive search results may include published applications and issued patents, both US and foreign, as well as non-patent literature such as scientific journals and papers.
Once the search results are received, the practitioner can review the information to determine whether the invention created by the client is actually new. A patent will only be granted for a new invention. Therefore, if an existing piece of prior art anticipates each and every aspect of the invention, patent protection will not be granted. A search will identify existing prior art in the field and help to determine if the invention is new. If the patentability search results show that another piece of prior art completely anticipates the invention, then the client will avoid spending money for preparing, filing, and prosecuting the application.
If the search results reveal that not all of the aspects of the invention are known in the prior art references, then the results can assist the practitioner and client in determining the next step moving forward. The results of the search can be analyzed to determine the scope of protection afforded to the idea and whether it would make financial sense to move forward with the drafting and filing of the patent. If it is determined that it makes sense to file the patent, then the practitioner can use the results of the search to draft an even stronger application, in essence, reducing the chance of several expensive office actions and possible denial of the patent.
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