By: Scott Denion   [4/21/22]

A patentability search (also referred to as a novelty search) is an attempt to identify relevant prior art and analyze those results to inform an inventor or business the intellectual property is to be assigned to and whether it is likely to be worthwhile to file a patent application or not. Doing your own search is usually a great place to start the patent process. Relevant prior art from your competition and other entities in your field often provides valuable insights into your invention and the state of others’ innovations. However, investing in a professional patent search is critical for a comprehensive investigation identifying the most pertinent prior art. Here are a few reasons you or your business should consider that investment:

1. Increased confidence in patentability

Every inventor and business wants to know if their innovations are eligible for a patent. For it to be patentable, the invention must be useful, novel, and non-obvious. Before you jump to filing a patent application or beginning the costly process of bringing a product to market, you and your business partners almost assuredly want to know if your intellectual property will likely be protectable. If the chances are low, you can adjust your business strategies accordingly. A professionally done patent search will present you with inventions that are closest to yours. The associated patent search report, which usually includes some level of analysis of the search results, will usually result in one of two conclusions. It will either give you more confidence as you move forward or save you the higher costs of patent prosecution if the search reports help you determine the invention isn’t likely to be patentable.

2. Save time and money

A comprehensive patent search takes time, particularly when the searcher is not a professional. A professional search firm can more efficiently and effectively identify the most relevant prior art, which provides your legal team with many advantages as they prepare your patent application. Specifically, the patent application can be crafted in view of the most pertinent prior art, highlighting the novel features. Reduced time prosecuting the patent application also leads to lower costs and securing of intellectual property rights faster.

3. Brainstorm additional inventive features

Suppose the patent search results indicate many prior art references are the same as the inventive concept. In that case, it allows you to go back to the drawing board and consider additional innovative features of your invention. For example, a patent identified by the professional searcher may disclose a similar overall apparatus. Still, an element of yours that the previous patent lacks might be a significant difference that improves the performance of the apparatus. Because you and your legal team identified these additional inventive features before filing, your legal team can safely add them to the application (subject matter added to your application after filing can be classified as “new matter” by the patent examiner).

4. Defend your patent

If you’re issued a patent that provides you broad protection, your competition will likely try to invalidate it so that they do not infringe on it. By identifying the best prior art upfront, you will be better positioned to defend your patent down the road. Many of the best patent searches are former patent examiners, patent attorneys, and patent agents. They all have an intimate knowledge of the patent system and how to interpret prior art in relation to an invention disclosure. Getting out in front of likely attacks on your patent will serve to strengthen your patent further and ensure it is not invalidated for an issue that could have easily been prevented (such as clarifying the meaning of a particular term).

Clearly, there are many advantages to performing a patentability search early in the patent process. Do you have questions about patent searches? Contact us today. We can help you assess your situation and develop the best search and prosecution strategy to protect your innovations.

To learn more about Dunlap Bennett & Ludwig and how we assist you, contact us by calling 800-747-9354 or emailing clientservices@dbllawyers.com.


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Posted in: Intellectual Property, Intellectual Property - Patents

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