A 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.