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What Is the Difference between a Patent Search and a Patentability Assessment?

Summary

In brief, a patent search is only the first step in a patentability assessment. A patentability assessment includes a patent search, a detailed analysis of the references uncovered and a written report on patentability.

Patent Search

A patent search (also called a patentability search) is just that—a search for relevant prior art documents without an analysis of references or written report on patentability. It typically involves a search of online databases for relevant prior art documents that could be cited against your proposed invention. Typically, the United States Patent Office database is primarily relied upon since the United States receives the most patent applications of any jurisdiction.

A patent search is useful for identifying if there are any prior art documents that describe the proposed invention. If any single prior art document uncovered describe the proposed invention in a manner that would enable a skilled person in the particular field to make and use the invention, then the proposed invention is not new and a patent cannot be obtained.

By proceeding with a patent search and identifying that a patent likely cannot be obtained, you can assess whether or not to spend the time and money on preparing and filing a patent application that will have little chance of being granted.

If the patent search does not disclose a prior art document that describes the proposed invention and there were no prior disclosures by the inventor, the invention is likely new. However, to obtain a patent, a proposed invention must also not be obvious. The determination of whether a proposed invention is non-obvious is more complex than identifying whether a proposed invention is new.

For obviousness, a patent examiner may cite multiple prior art documents in combination against your application. None of these documents describe the entire proposed invention, but the sum of the teachings of the documents will be alleged as causing the proposed invention to be obvious. Patent searches alone do not involve a detailed consideration of what documents could be combined and the strength of arguments for and against those combinations rendering your proposed invention obvious.

A patent search is less expensive than a patentability assessment but the result is less reliable and less informative of the likelihood of obtaining a patent. The cost of a search typically varies with the amount of time spent searching and the skill of the searcher. An inexpensive patent search may do you more harm than good. If a search fails to reveal important prior art documents that will preclude you from obtaining a patent, you may end up spending a large amount of time and money pursuing a patent that cannot be obtained.

Patentability Assessment

A patentability assessment includes a patent search, a detailed analysis of the references uncovered and a written report on patentability. The detailed analysis of the references uncovered involves a consideration of what prior art documents could be combined for obviousness as well as the strength of arguments for and against those combinations rendering your proposed invention obvious.

A patentability assessment also considers other grounds for patentability such as utility and sound prediction, and whether the proposed invention constitutes eligible subject matter. If there is a question of utility or sound prediction, the patentability assessment will identify the issue and the steps needed to address it in an application. If there is a question of eligible subject matter, the assessment will detail whether there are certain forms of claims that may make the proposed invention eligible.

A patentability assessment is more expensive than a patent search but is more valuable and more informative of the chance of obtaining a patent. The cost of a patentability assessment typically varies with the amount of time spent searching, analyzing references, and preparing the written report as well as the skill of the searcher and the patent agent or patent lawyer providing the assessment. To get the best results, the patent searcher ought to be the same person who carries out the patentability assessment.

Which Should I Choose?

  • A patent search is well-suited to those who are experienced in reviewing and analyzing patent search results themselves and coming to their own conclusions on whether it is worthwhile for them to apply for a patent. A patent search may also be appropriate for clients who intend to pursue a patent as long as the proposed invention is new on the belief that many obviousness rejections can be overcome though claim amendments and argument. You can try carrying out your own patent search using Google Patents.

  • A patentability assessment is well-suited to those who want a detailed and reliable assessment of the likelihood of obtaining a patent and for what scope of invention. This should include most individuals and businesses who are new to the patent system so that as many potential barriers as possible can be identified before larger expenditures on patenting are made.

If you would like to discuss your options for determining the patentability of your idea, please do not hesitate to contact us for a complimentary and confidential telephone appointment.