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Patent SearchA patentability search allows a patent practitioner to assess the likelihood of successfully obtaining a patent with the United States Patent and Trademark Office (“USPTO”). The USPTO may issue a patent to whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, subject to certain conditions and requirements.

A patentability search allows a patent practitioner to better understand the scope of the state of the art, the level of skill of a person in the art, and the potential for obtaining a peiroatent registration that protects the new and useful process, machine, manufacture, or composition of matter.

What does it mean to be “novel” and “non-obvious”?

To be patentable, the new and useful process, machine, manufacture, or composition of matter (“invention”) must be novel and non-obvious. In assessing novelty, a patent practitioner searches and reviews the universe of prior art, such as issued patents, expired patents, patent applications, and other non-patent literature, to determine if the exact invention has already been disclosed. In general, a prior disclosure by a third party is a complete bar to patentability, and a prior disclosure by the inventor is subject to specific timing as set by statute regarding such previous disclosures.

patentsIn assessing non-obviousness, a patent practitioner reviews the same universe of prior art to determine if two or more prior art disclosures may be combined, resulting in the invention. To determine if the inventions may be combined, a patent practitioner assesses the level of skill required to combine the inventions, if anyone had a reason to ever combine the invention, likelihood of success with combining the inventions, if the costs to combine are prohibitive, if the prior art identifies a need for a solution that the invention provides, and if the prior art teaches against the combination of inventions.

Further, before conducting a patentability search, a patent practitioner should understand:

  • what problem the invention solves;
  • alternative solutions to the problem that existed at the time the invention was created;
  • whether the invention been reduced to practice and applicability to related areas;
  • whether any improvements to the invention exist; and,
  • competitors to the client that create solutions to similar problems.

One goal of determining if the invention is novel or non-obvious is to determine which elements or features make it novel and non-obvious. A patent practitioner does this to focus the claims of a future patent application on those elements or features of the invention that distinguishes it from any prior art. The claims of a patent application are the protectable aspects of the invention once a patent registration issues. Therefore, a patent practitioner, while focusing the claims on those elements or features of the invention that distinguishes it from any prior art, does so with the intent of keeping the claims broad enough to reduce the likelihood of a third party creating a similar invention that isn’t anticipated by the patent claim.

Is it necessary to file multiple patents?

After conducting the search and reviewing the prior art, a patent practitioner will provide recommendations based on their assessment of novelty and non-obviousness. These recommendations generally identify the likelihood of obtaining a patent, the protectable aspects of the invention, and the types of claims that may be written to protect the invention. Additionally, the patent practitioner may recommend filing multiple patents to cover the invention. For example, multiple patents may include more than one utility patent to protect the functional aspects and/or a design patent to protect the non-functional aspects.

Infringement possibilities

Another goal in completing the patentability search is to conduct a preliminary assessment of infringement. The assessment entails reviewing the claims of registered patents and patent applications that were found during the patentability search. A patent practitioner then assesses – on a preliminary basis – if any of the claims contain elements that are completely found within the invention. If all of the elements are found, it may be recommended to conduct a full infringement analysis – a deep dive into the claims of the patent – prior to offering the invention to the public or filing a patent application.

To summarize, the immediate benefits of conducting a patentability search are:

  • Determining if the invention is novel and non-obvious;
  • Determining if a patent application should be drafted;
  • The likelihood that a patent application will mature into an issued patent;
  • Determining how broad the claims of the patent may be to increase the likelihood of obtaining a patent; and
  • Determining if a likelihood of infringement exists before subjecting an inventor/owner to a patent infringement complaint due to offering the invention for sale.

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