Tip #5: 3 Things You Should Know About Patentability Searches

By Jeremy Ben-David, Patent Attorney, JMB, Davis Ben-David, Har Hotzvim

Jeremy Ben-David

What is a patentability search (and what is it not)?

A patentability search is a search of the prior art intended to establish the probability of successfully registering a patent for your invention. While the main data sources searched by both Patent Attorneys and Examiners are patent databases generally, and scientific journal databases for inventions in biotech and chemistry, this is mainly for convenience. There are vast sources of knowledge other than these databases. All publicly available information can be used to establish the patentability of your invention.

A patentability search is not a ‘freedom to operate’ search and should not be confused with such a search. (This will be discussed in a later post).

 

Why is a patentability search important?

A patentability search is important not merely to assess the likelihood of obtaining a patent for your invention, but, equally significant, as a way of improving and strengthening your patent application. Discovering which parts of your invention may already have been thought of by others will often cause you to rethink part of your invention and to improve it substantially.

 

When should a patentability search be performed?

As mentioned above, doing a patentability search may bring to light parts of your invention that have been thought of by others, in response to which you may come up with new and sometimes better solutions. Therefore, the best time to do a search is before preparing a patent application.

 

An additional note

While it is true that there is no requirement to perform a patentability search and a Patent Examiner will perform such a search while assessing your patent application and provide the results, it is extremely unwise to wait for the Patent Examiner’s report. At that stage, which will probably be at least a couple of years after filing the application, you will have invested time and money only to discover that your invention is not quite as patentable as you thought (and told your investors!). To make matters worse, once a patent application has been filed, it is not possible to add information about variations and additions to what was initially described and shown. The bottom line is that the more you can find out about the prior art before drafting the patent application, the better prepared you will be, and the better will be the chances of receiving a valuable patent.

 

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