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 (i.e., identifying prior art relevant to patentability). A patentability assessment includes a patent search, a detailed analysis of the references uncovered and a written report on patentability including subject matter eligibility, novelty, inventiveness and utility.

Patent Search

A patent search (also called a patentability search) is just that—a search for relevant prior art documents without an analysis of the references uncovered 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 (i.e., prior art which discloses one or more elements of your invention). The United States Patent and Trademark Office (USPTO) database is often a major source of these documents since the United States receives more English-language patent applications than any other jurisdiction. Examples of searchable databases containing prior art include the Canadian Intellectual Property Office (CIPO)’s Canadian Patents Database, USPTO’s Patent Public Search, the World Intellectual Property Organization (WIPO)’s Patentscope Database and Google Patents.

A patent search is useful for identifying if there are any prior art documents that describe the proposed invention and may therefore have bearing on whether a patent would ever be granted for the invention. A prior art document may be a patent or published patent application, however, journal articles, blog posts and Youtube™ videos are also examples of prior art. If any single prior art document uncovered describes 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 for the same.

Having begun the patenting process with a patent search and identified that a patent likely cannot be obtained, you can determine whether, given the low likelihood of a patent being granted, an investment into the preparation and filing of an application for a given invention is a worthwhile one. Depending on your goals, business trajectory, risk tolerance and financial resources, the answer may still be “yes”.

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. Prior disclosures by the inventor are often sales of the invention or demonstrations made to third-parties absent measures to protect its confidentiality. Disclosures by the applicant are subject to a 12-month grace period in Canada and the US, such that the applicant’s entitlement to a patent for the invention is not barred by disclosures falling within this period. Further, it is not just any disclosure of the invention which will impact patentability. The disclosure must be enabling in the sense that it provides the public with the information it needs to make and use the invention. For example, where the invention is a hockey skate and the skate is disclosed when it is worn by a player during a game, a person watching the game who sees the skate from a distance may nonetheless have insufficient information to enable them to make the same skate.

Novelty, however, is only one requirement for a patentable invention. 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.

When it comes to obviousness, a patent examiner may cite multiple prior art documents in combination against your application. Although none of these documents taken alone describe the entire proposed invention, the sum of the teachings of the documents will be alleged to render the proposed invention obvious. For example, consider an invention comprising a mechanical pencil which also functions as a stylus for touch-screen electronics. Although a single piece of prior art may not disclose the invention, if an examiner finds prior art disclosing a mechanical pencil and prior art disclosing a pen which doubles as a stylus, the examiner may allege that it was obvious in view of the prior art to make a mechanical pencil which functions as a stylus. Notably, 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 to render your invention obvious as well as the strength of arguments for and against those combinations rendering your proposed invention obvious.

A patentability assessment also considers other requirements for patentability such as utility and sound prediction, and whether the proposed invention constitutes eligible subject matter. Utility and sound prediction refer to the requirement that your invention be useful. 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. Methods of medical treatment are one example of subject matter which is generally ineligible for patent protection, however, inventions of this nature are often granted patents as a result of strategic drafting of claims by experienced patent agents. The same is true of software inventions.

A patentability assessment is more expensive than a patent search but is more valuable and more informative of the chance of obtaining a patent. Further, a patentability assessment may help guide the drafting of the patent application in such a way as to expedite its allowance. Knowing what is out there and being able to anticipate objections from the patent office can be very valuable. 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.

Note that a patentability assessment is limited to an assessment of the ability to obtain a patent for a given invention. Where an invention is an improvement to an existing device or method, the applicant, despite being able to patent it, may not be able to practice it. This will be the case if practicing the invention necessarily involves practicing another patented invention not belonging to the applicant (note that a patent examiner reviewing an application for your invention will give no consideration to this). Consideration of whether an applicant for a patent will be able to practice the applied-for invention is the subject of a different search and opinion, commonly referred to as a freedom to operate opinion.

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 if 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. If you would like to learn more about the different strategies you can use to conduct your own patent search, please consult our additional resource on How to Conduct a Patent Search.
• A patentability assessment is well-suited to those who want a detailed and reliable assessment of the likelihood of obtaining a patent for an invention and the likely scope of such a patent. 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. Inventors looking to secure funding for the development and commercialization of their proposed invention may also rely upon a patentability assessment to make a stronger case for why their proposed invention is worth investing in.

If you would like to discuss your options for determining the patentability of your idea, contact us for a complimentary and confidential telephone appointment with a member of our team.