What is a patentability search?

Patents are granted only to those inventions that are new, useful, and non-obvious (see Bitlaw's legal discussion on Patent Requirements for more information). It is the job of the patent office to compare each patent application with what others have done to see if the described invention is new and non-obvious. A patentability search is performed by an inventor (or her attorney) before the application is filed to determine the same thing--is the invention new and non-obvious. There are other types of patent searches other than patentability searches, such as an invalidity search (a search to determine whether or not an issued patent is valid) or a clearance search (a search to find issued patents that might cover a new product or service). On this web page, the phrases "patent search" and "patentability search" will be used interchangeably.

To evaluate whether an invention appears to be new and non-obvious in a patentability search, the "prior art" is examined to find similar devices and methods that pre-date the invention. The concept of prior art includes all public disclosures before the filing date of a patent application, including US patents and patent applications, patents and applications from other countries, web pages, advertisements, and any physically created items or previously provided services (see Bitlaw's discussion on prior art searching for more information on what qualifies as prior art).

In practice, a patentability search covers only a limited subset of the prior art. For example, most patentability searches in the United States focus on U.S. patents and patent applications, with lesser searching of European and Canadian patents and some additional Internet searching for unpatented products and services. It is fair to ask why U.S. searches focus on prior art from the United States when prior art from any country can be used to prevent an invention from obtaining a patent. The primary reason is cost. It is not cost effective to conduct a detailed search on non-English prior art references (such as Japanese and Chinese patents). The best search for a reasonable cost focuses on English patent references, and the collection of U.S. patents and patent applications is the largest body of English language references.

What gets searched in a patentability search?

This question seems obvious, as it is the invention that gets searched. However, almost every new product includes many old features that are similar to, if not identical to, competitive products. Your "invention" is that aspect of your product that is both unique (not found in any other competitive products) and gives makes your product better/cheaper/more attractive than those competitive products (see our guidance on identifying your invention for more information on this topic). Limiting your patent search to those aspects of your product that you believe to be inventive is one of the most important steps of a patentability search. Consequently, before we request that a search be undertaken on your invention, we will walk you through the requirements for patentability and work with you to identify the specific features of your new idea that should be searched.

Use a patentability search to avoid wasteful patent applications

Frequently a patentability search will uncover prior art that proves that the invention being considered for the patent application is not new, or that the invention is simply an obvious variation of what others have already done. In these cases, it does not make sense to file the patent application on that invention since the invention does not meet the requirements for patentability. Since a patentability search generally costs $2,000 at Forsgren Fisher McCalmont DeMarea Tysver, while a patent application usually costs between $8,000 and $14,000, discovering that an invention is not patentable can save a great deal of money. You can review Bitlaw's Guidance on How Much Does a Patent Application Cost? for more information on patent application costs.

Use a patentability search to improve a patent application

Even when a patentability search does not prove the invention unpatentable, a patentability search almost always provides information that is useful in drafting a patent application. The results of the search will identify prior art that is close to the invention, allowing the application to be drafted in light of that prior art. If the prior art is close to the invention, areas that are patentable in spite of that prior art can be emphasized in the patent application. If the patentability search had not been conducted, it is likely that too much time (and money) would be spent describing aspects of the invention in the application that were not patentable, while not enough time is spent describing the aspects that are more likely patentable.

Fallibility of Patentability Searches

Unfortunately, even if you have us conduct a patentability search, there is no guarantee that the best prior art will be discovered in the search. Searches generally rely upon keyword searches, and similar prior art references may use different words for the same general concepts. Furthermore, because of the cost involved, foreign prior art is rarely searched in any significant manner during a prior art search. Non-patent literature (such as product manuals from the 1980s) can also be difficult to find and search properly. In addition, under U.S. law, patent applications are kept confidential and are not published until eighteen months after they are filed. A patent application filed before your application will be prior art that can be used against you even if it has not yet published by the time you file your patent application. As a result, prior art searches are never perfect, and you should expect that relevant prior art might appear for the first time in a rejection from the U.S. Patent Office even after a patentability search is conducted.

In other words, patentability searches are not perfect, and never tell you that an invention is patentable. Rather, they are useful for telling when an invention is not patentable. In spite of this fallibility, inventors use patentability searches to prevent the filing of patent applications on unpatentable inventions, and therefore the searches are extremely useful even if the patentability search won't correctly identify all unpatentable inventions. Furthermore, even if the best prior art is not always discovered, the discovery of some relevant prior art will greatly aid in the drafting of a patent application.

Cost of a Patent Search

At Forsgren Fisher McCalmont DeMarea Tysver, we typically charge $2,000 for a patentability search. In most cases, we will use approximately $800 of that fee to request an outside searching company (such as Cardinal IP) to perform the search. The remainder of the $2,000 covers our cost for requesting the search, reviewing the search results, and reporting on the results of the search to our clients. In some cases, it may be advantageous to have the source performed by professionals inside our firm. In most cases, the overall cost to our client is not significantly different if the search is performed internally as opposed to hiring Cardinal IP or another vendor to perform the search.

Can I do the search myself?

Yes, and many inventors have become quite skilled at doing their own patent searching. We recommend that inventors use the US Patent Office website, Google Patents or FreePatentsOnline.com to conduct a patentable search. If you do conduct your own searches, bear in mind that the analysis of search results can be tricky--it can sometimes be difficult to identify patentable aspects of an invention in light of similar prior art documents. In other words, a pessimistic inventor will frequently find a similar patent and despair that there is nothing patentable in their idea when in reality valuable patents can still be obtained. You can also request that a search be done for you directly from a third-party search firm, such as Cardinal IP.

Can I get a cheaper search from somewhere else?

Yes. For example, requesting the search from the professional patent searching company that we use will cost about $800. The additional cost from Forsgren Fisher McCalmont DeMarea Tysver covers our professional services in requesting and reviewing the search. Although we believe that we are highly skilled in managing and analyzing patentability searches, we know that we are not the cheapest attorneys that you could find. If you decide to go elsewhere, we encourage you to hire a patent attorney or agent to conduct or analyze your search. If you choose to obtain a patentability search from someone other than a patent attorney or patent agent, please keep in mind the following thoughts:

• Be careful if someone offers you a money-back guarantee if you don't like the results of your search. These providers have a strong incentive to keep you happy so that you request further services from them. If they truthfully tell you that you do not have a strong likelihood of obtaining a patent, they will expect that you will request your money back and they will lose you as a customer. In other words, they have a strong motivation to put a positive spin on all search results, even when the search result is quite negative.
• Make sure that the search focuses on your invention and not your product. As explained above, if time is not taken to analyze a new concept for the inventive features that will be the subject of the search, your search will be too broad and will return non-useful results while maybe missing some of the most important prior art.
• Don't trust anyone that promises an "exhaustive" or "perfect" patent search. Large companies frequently spend tens of thousands of dollars trying to find prior art to a competitor's patents, and they understand that even these searches are far from perfect.
• Even if you get your search from someone else, be careful relying upon patent advice from someone who is not a qualified patent attorney or agent. The results of the patent search should be used to determine whether your invention is not patentable, or whether the scope of what you consider your invention should be narrowed given the results of the search. This type of advice is legal in nature, and I recommend that you turn to a qualified professional that is legally permitted to give you this kind of advice.

When is a Search Unnecessary (or even unhelpful)?

Patentability searches will cost up to $2,000 or more, so they should be undertaken only when an equal or greater benefit is obtained by the search. In some cases, however, inventors are very familiar with the prior art in the area of their invention. They may be experts in the field and may be familiar with all competitor's attempts to improve a certain technology. In these cases, patentability searches rarely develop any useful results that were not already known by the inventors.

In other circumstances, clients will approach our firm with a detailed business plan for developing their product or service. This business plan may not require that a patent be obtained as quickly as possible, but only that the patent process be undertaken (See our guidance on "Why Should I File a Patent Application"). In other words, the patent pending status itself is as--or even more--valuable than an issued patent. In these circumstances, it frequently does not make sense to conduct the patentability search. If the invention is fairly well defined, the application can be tailored sufficiently without a full knowledge of the prior art, and the $2,000 search fee can be avoided.

In addition, sometimes it can be extremely difficult to conduct an adequate search on a particular invention. Some software related concepts, for example, can be difficult to define and even more difficult to actually search. Even professional searching companies will either find nothing of relevance or will discover hundreds of references all of seemingly equal relevance. In these cases, the results of the patentability search are frequently unhelpful. Your patent attorney at Forsgren Fisher McCalmont DeMarea Tysver may have "gut" feelings based on their years of experience for the types of inventions that tend to have fruitless searches and can guide you away from spending money on such services.

Finally, some inventions may be so easy to search that a full patentability search is unnecessary. If some keywords must be used to describe the invention, then a simple keyword search of the Internet and patent database can quickly discover relevant prior art (or the lack of any such prior art). In these cases, it is not necessary to conduct a full patentability search. Instead, the attorneys of Forsgren Fisher McCalmont DeMarea Tysver will simply bill you the time necessary to conduct this quick search.

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