In the busy streets of London, engineer Jane had developed a groundbreaking technology that could revolutionize renewable energy. Excited about her invention, she rushes to file a patent application, only to discover that a similar technology was patented just a few months earlier.
Jane’s dreams of patenting her innovation are dashed. This scenario underscores the critical need for a patentability search—a proactive step that can help innovators like Jane avoid unnecessary pitfalls and ensure that their hard-earned inventions receive the patent protection they deserve.
In this blog post, we delve into the intricacies of patentability, exploring the meaning of patentability searches, its benefits, essential criteria for patent eligibility, and the process involved.
What is Patentability?
Patentability refers to the set of legal requirements that an invention must meet in order to qualify for a patent. In most jurisdictions, an invention must satisfy the following criteria to be patentable:
- Novelty: The invention must be new and not have been disclosed to the public before the date of the patent application. It cannot be something that is already known or used by others.
- Inventive Step (Non-Obviousness): The invention must not be obvious to someone skilled in the relevant field. It should represent a sufficient advancement beyond existing knowledge or products.
- Industrial Applicability (Utility): The invention must be capable of being made or used in some kind of industry. It should have practical utility or be functional in a specific application.
- Patentable Subject Matter: The invention must fall within the scope of what the law defines as patentable. Certain entities like abstract ideas, laws of nature, and purely mathematical formulas, are not patentable.
- Sufficiency of Disclosure: The patent application must fully and clearly describe the invention so that someone skilled in the field can reproduce it.
Meeting all these criteria means that an invention is highly likely to be considered patentable under most patent systems, although specific rules may vary by country or jurisdiction.
What is a Patentability Search?
A patentability search is a thorough investigation done to determine whether a claimed invention is novel, non-obvious, and has utility, making it eligible for patent protection. Also known as novelty search, it involves carefully examining existing prior art such as patents, news, articles, scientific literature, magazines, etc, to assess the uniqueness of the claimed invention/technology.
In other words, by doing a patentability search, inventors can make informed decisions about pursuing patent protection and avoid potential pitfalls.
What is the Need for Patentability Search?
The primary purpose of a patentability search is to evaluate whether an invention is novel and non-obvious.
The patentability search provides crucial information about the likelihood of obtaining a patent, helping inventors avoid unnecessary expenses related to filing and prosecuting a patent application.
Benefits of a Patentability Search
Conducting a patentability search offers several unique benefits:
- Assessing Novelty: A patentability search helps determine whether your invention is truly novel, meaning it hasn’t been disclosed in prior patents or publications. If the invention lacks novelty, it may not be eligible for getting a patent.
- Identifying Prior Art: The novelty search uncovers prior art, like existing patents, news, articles, scientific literature, magazines, etc related to your invention. Understanding prior art is essential for evaluating the patentability of your invention and informing your patent strategy.
- Mitigating Risks: By conducting a patentability search early in the process, you can identify potential obstacles to patentability, such as existing patents covering similar technologies. This allows you to assess risks and make informed decisions about pursuing patent protection.
- Saving Time and Resources: Discovering relevant prior art before filing a patent application can save time and resources. If similar inventions already exist, you can avoid investing in a patent application that is unlikely to succeed.
- Informing Patent Strategy: The results of the patentability search provide valuable insights for shaping your patent strategy. You can assess the strength of your invention’s novelty and inventive step, identify potential areas for improvement, and refine the scope of your patent claims to maximize protection.
- Enhancing Marketability: Understanding the existing patent landscape helps you position your invention in the market more effectively. You can identify competitors, assess the level of innovation in your field, and explore opportunities for collaboration or licensing.
- Building Confidence: Knowing that your invention has been thoroughly vetted against existing patents can give you the confidence to move forward. This assurance can be particularly important when seeking investors or partners who want to see that you have taken the necessary steps to protect your intellectual property.
Overall, a patentability search is a strategic investment that not only protects your intellectual property but also enhances your innovation’s market viability.
Who Should Perform a Patentability Search?
Patentability searches are essential for various stakeholders in the innovation ecosystem. Here are some key players who should consider conducting a patentability search:
- Inventors: Individual inventors looking to protect their innovations should conduct a patentability search to assess the uniqueness of their inventions.
- Legal Professionals: Patent attorneys and agents who require detailed and accurate prior art information to advise their clients effectively.
- Research Institutions: Universities and research organizations developing new technologies should conduct patentability searches to protect their research outcomes.
- Startups: Emerging companies seeking to secure intellectual property rights (IP) for their innovations can benefit from a patentability search to avoid IP-related legal issues.
- Corporations: Established companies looking to expand their patent portfolios or explore new markets should conduct patentability searches to ensure their innovations are unique.
Professional patent search firms like us—SciTech Patent-Art (SPA)—bring specialized expertise and access to extensive databases, ensuring a thorough and reliable search that goes beyond surface-level investigations.
Types of Patents
Before diving into a patentability search, it’s crucial to identify which of the three main patent categories aligns with your invention:
- Utility Patents: These protect new and useful processes, machines, manufactured items, and compositions of matter, as well as improvements to existing inventions.
- Design Patents: These patents specifically protect new, original, and ornamental designs for manufactured articles.
- Plant Patents: These are granted for new and distinct varieties of plants that have been asexually reproduced (excluding tuber-propagated plants and those found in the wild).
Understanding which type of patent applies to your invention is crucial for conducting an effective patentability search.
What CAN NOT be Patented: Non-Patentable Subject Matter
While patents can protect a wide range of inventions, certain types of subject matter are typically non-patentable. The specifics may vary depending on the jurisdiction, but here are some common examples:
- Laws of Nature: Natural phenomena, scientific principles, and abstract ideas cannot be patented. For instance, you cannot patent the process of water evaporating in nature—it’s a fundamental law, just as you cannot claim ownership of the laws of nature.
- Natural Products: Naturally occurring substances (like minerals), organisms (including their genetic makeup), and biological materials (like cells, and enzymes) found in nature typically cannot be patented.
- Abstract Ideas and Mental Processes: Abstract ideas, mental processes, and purely theoretical concepts are not eligible for patent protection. For example, you cannot patent a basic economic principle or a computational algorithm.
- Methods of Doing Business: Purely abstract methods of doing business, commercial activities, and advertising strategies are generally not patentable. For instance, you cannot patent a fundamental business practice, such as a simple accounting method.
- Literary, Artistic, or Aesthetic Creations: Works of art or literature are protected by copyright, not patents. For example, J.K. Rowling could not patent the Harry Potter series; instead, she holds the copyright.
- Non-Functional Designs: Objects created for their beauty or artistic merit, lacking any utilitarian purpose, fall outside the scope of patent law. While they may qualify for other forms of protection, their aesthetics alone do not meet the criteria for a patent.
- Frivolous Inventions: Inventions that are considered frivolous or not serious may not be patentable. For example, you cannot patent a perpetual motion machine, as it defies the laws of physics.
- Inventions Contrary to Public Policy or Morality: An invention designed to facilitate illegal/unethical activities or that poses a significant risk to public health, or morals cannot be patented.
- Surgical Processes: Techniques and methods used in surgical settings to treat patients are not patentable. These processes are considered part of the medical and healthcare field, where the focus is on public access and benefit rather than exclusive rights.
Also, you must keep in mind that the scope of patentability can vary with geography. India, for instance, prohibits patents on traditional knowledge, agricultural methods, and the software itself per se. Many European countries place stricter limits on the patentability of plants and animals produced by biological processes.
Steps to Conduct Patentability Search
The process of conducting a patentability search involves several important steps as given below:
- Define the Invention: Clearly articulate what makes your invention unique by identifying key features associated with the claim/technology
- Identify Keywords: Develop relevant keywords and phrases that describe your invention effectively.
- Assign Correct Classification Codes: After developing a keyword list, assign correct classification codes related to the invention’s key features.
- Search Databases: Utilize multiple patent databases, both free and subscription-based, to gather a comprehensive set of prior art documents.
- Focused Searches: Start with narrow searches and expand based on the relevancy of the results retrieved.
- Analyze Results: Review identified documents critically to assess their relevance concerning your invention.
- Document Findings: Compile findings into a report that outlines potential obstacles and strategies moving forward.
While a preliminary patentability search may focus on a limited number of patent databases, a comprehensive search—typically done by professional patent analysts—generally covers a wide range of sources and languages. They will also review non-patent literature, such as scientific journals and conference proceedings, to ensure thorough coverage of prior art.
Cost of a Patentability Search
The estimated cost of a patentability search can vary significantly based on complexity and project scope. At SciTech Patent Art, our base rate for patentability searches starts from $ 500 onwards. But again, the price is not fixed and depends on various factors like the technology domain of the patent, complexity of the invention/claim, databases to be covered, etc.
Why Choose SciTech Patent-Art for Conducting Patentability Searches?
While inventors can conduct patent searches using free online databases, engaging with a professional patent service provider like SciTech Patent-Art (SPA) offers several advantages:
- Vast Experience: With over 20 years of industry experience, SciTech Patent-Art has successfully handled 300+ Fortune 500 companies’ clients. This extensive experience underscores SPA’s proficiency in conducting patent searches and addressing patent-related requirements of clients.
- Skilled Patent Search Team: Our highly trained patent analysts and scientists bring years of experience conducting thousands of targeted searches. Their deep technical expertise and rigorous training empower them to perform thorough and insightful analyses.
- Unmatched Database Access: Innovators conducting patentability searches on their own often rely solely on limited free databases, which risks overlooking critical prior art hidden within premium databases. We at SciTech Patent-Art, have access to several premium databases, ensuring a thorough search that captures all relevant information and minimizes the risk of missing vital references.
- Cutting-Edge AI/ML Tools: SciTech Patent-Art employs a proprietary Deep Web Search Tool for comprehensive non-patent literature searches, alongside advanced AI/ML and analytics tools. These advanced proprietary tools developed by us, are designed to streamline the patentability search process, enhancing efficiency and precision.
- All-in-One Patent Solutions: SciTech Patent-Art is your all-in-one partner for all patent-related needs. From patentability searches and drafting to filing, prosecution, and strategic IP consulting, we cover every aspect of the patent process.
Basically, choosing us means gaining access to patent professionals who stay updated on evolving patent laws and trends. We recognize that each project is unique, necessitating tailored approaches for optimum results. Trusting us for your patentability search can be a pivotal step towards winning patents while minimizing potential risks associated with infringement.