When is a Patentability Search Needed?
So, you have invented a product that you believe has potential to be valuable. You want to secure the exclusive rights to produce your invention commercially (or license your invention to others for production), so you begin researching the process for filing a patent application.
You quickly learn that filing a patent is a complicated process. In addition to the procedural steps, you must meet certain requirements for the patent to be patentable. That is the subject of this article. Before undertaking the patent filing process, you must make certain that your invention is patentable.
A patentability search generally includes:
Making certain that your invention is patentable subject matter, and
Making certain that your patents is novel, non-obvious, and useful.
The most daunting requirement is making certain that the patent is novel. This generally requires a search of existing inventions, invention designs or concepts, and prior/pending patent applications (whether a patent was granted or no) in the United States and Abroad.
Below, we discuss what are the benefits of a patentability search, what is required for an invention to be patentable, and how to conduct a patentability search.
What Are the Benefits Associated with a Patentability Search?
To begin, a patentability search will tell you whether your invention is capable of patent protection. There is no sense in wasting money and time on filing a patent application if your invention is not patentable subject matter or fails to meets the novel, non-obvious, and usefulness requirements. As you know the costs of filing a patent application are high. This is particularly true if you employ professional service to assist you. For more information and the costs associated with filing a patent application, visit the LawTrades blog.
Next, performing a patentability search can make you a better client when working with legal professionals. A legal professional will undertake any or all of the steps involved in filing a patent application. This generally includes undertaking a patentability search and search for existing patents. Many of these professionals charge a fixed fee for services. As an informed client, you can make certain that you are receiving the appropriate value for your money. Further, you may be able to provide material information or help to the legal professional to make your patent filing a success. Remember, the legal professional does not have the knowledge or background understanding that you have of your invention. Informing the legal professional of prior inventions, inspirations, or other novel aspects of the invention can be very useful.
Finally, conducting a patentability search is a major step in educating yourself on the requirements for writing the patent application. Your patent search will reveal the general descriptions, specifications, and claims of previously-filled patent applications. Employing the same descriptive techniques and explanatory diagrams and words can increase the quality of your patent applications.
Requirements to Secure Patent Rights?
There are three types of patents: Utility, Plant, and Design. For purposes of this article, we focus upon the utility patent. To be capable for patent protection, the claimed invention must be patentable subject-matter. A utility patent provides an inventor with protective rights regarding a process, machine, article of manufacture, or composition of matter. The patent application will make claims regarding specific elements of the invention. The requirements for a claimed element to be protectable by patent are:
• Novel – This means that the claimed elements of the invention must be new. The invention must not have been previously disclosed to the public. Disclosing something to the pubic includes:
⁃ Selling or otherwise offering the product to the public.
⁃ Making the claimed elements available for public scrutiny through publication.
⁃ The claimed elements have not been the subject of prior patent filings.
• 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.
Searching for Prior Disclosures?
As previously stated, an invention cannot have been previously disclosed to the public through any of the aforementioned manners. Most people when conducting a patent search fail to undertake the process of determining whether the invention has been previously disclosed through a method other than patent application. Below are some of the methods for searching for prior invention disclosure.
• E-Commerce Websites – If you invention has previously been disclosed, it is likely that the invention is in use. For consumer products, it can be helpful to search retail websites to determine if the item is for sale. Websites, such as Amazon.com or Wal-Mart.com will present a pretty thorough list of recent models of inventions. You may also use websites like Ebay.com to identify older versions of a particular invention. Unfortunately, many inventions are not sold through larger retailers or are not targeted to end-users. In this case you will have to undertake alternative search methods.
• Product review websites – Product review websites can be a great place for identifying products that intended for public use or consumption. Often, the reviewers will identify various alternatives for a particular invention. This can provide you with information about inventions that you did not know existed. Further, it can help you understand how these alternative inventions functions for patentability purposes.
• CrowdFunding Websites – Too many products never see the light of day. Individuals design or create a product and it never makes it to market. Other products make it to market but are never successful. The inventor simply sells the item through their personal websites. Because achieving notoriety for a website on the major search engines is difficult, the website never gets noticed. The lack of available marketing budget means that paid websites are out of reach. Many of these inventions list on crowdfunding websites, such as Indiegogo or KickStarter. Searching the past and current inventions on these sites can be very useful.
• Manufacturer Websites – Lastly, many products are not meant for consumer use. Instead, they are used for business or industrial use (such as a part to a larger machine). As such, it is important to search for these items by manufacturer. Even if the product (the is used in a separate machine) is not manufactured or produced by the manufacturer of the end product, you may be able to identify the original manufacturer. As such, you should visit the webpages of the identified manufacturer to determine if they have previous design concepts, prototypes, or alternative versions of the product that could affect your invention.
Searching and identifying prior disclosures requires a great deal of trial and error to identify appropriate search terms and locations for search.
Searching for Existing Patents?
The next step in the patentability search is to search for prior patent applications or granted patents. Searching for prior patent applications involves using the Internet to search through patent databases. You can pay a legal professional to search for you. This is the most expensive method of conducting a patent search. Alternatively, you can hire a patent search firm. Make certain to identify reputable firms before hiring them. Many of these firms do not do quality searches. Lastly, you can undertake the patent search yourself.
To conduct a patent search yourself, you must become familiar with the available resources. There are a number of paid databases that you can use to search for patent filings. These databases are generally beyond the needs or ability of amateur patent searchers. The advanced functions that they provide are more suited to knowledgeable professions.
Luckily, there are several free databases that you can use to conduct your patent search. These include, Google Patents, The USPTO patent databases, Espace Europen Patent Database, and Patentscope – the World Intellectual Property Organization database.
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.
