Patentability Search
Patentability Search
Assess novelty of an invention, make well-informed decisions before investing in R&D and the patent application process with expert-led patentability search.
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CONTENTS
What is a patentability search?
A patentability search, also known as a novelty search, is a type of prior art search that helps determine if an idea or invention satisfies the patentability criteria of novelty.
A patentability search is an important step that each inventor or innovator must consider before investing significant resources in the patent application process, or even at the early stages of research and development.
Why conduct a patentability search?
By identifying prior art that may disclose similar elements as your invention, a patentability search can offer the following benefits:
1. Assess novelty of your invention
One of the main conditions for patentability is novelty, as outlined in 35 U.S.C. § 101. By conducting a patentability search, prior art that may impact the novelty of an invention can be identified.
2. Gain insights regarding non-obviousness
While it is comparatively easier to assess novelty, the non-obviousness criteria is a little bit more complex, and can depend largely on the patent examiner.
While a patentability search cannot fully answer the non-obviousness criteria, the search results can help provide more information by presenting prior art that discloses the elements of the invention found in a combination of sources.
3. Strengthen patent applications
Identifying prior art can aid in crafting strategically-worded patent claims. Well-drafted claims that effectively differentiate the invention from existing technologies contribute to the strength of the patent.
4. Anticipate potential patent office rejections
By gaining insights regarding the scope of the invention, the technology area it is in, and the existing technologies within that space, a patent applicant can anticipate and effectively prepare answers to office rejections.
5. Gain insights for design-around
By identifying existing patents and non-patent disclosures in a given technology space, innovators can strategically modify their inventions to steer clear of the already patented features. This might involve changing specific elements, or incorporating new or different technologies to create a non-infringing design or invention.
6. Strategic decision making
The information obtained from a patentability search enables inventors and businesses to make informed decisions about whether to pursue a patent application.
If the search reveals that the invention is likely to face significant obstacles due to existing prior art, they may choose not to proceed with the application or modify the invention to enhance its patentability.
What is in a patentability search report?
A patentability search report would typically list all the relevant prior art that disclose similar elements to an invention.
An ideal novelty search report will include a technical mapping of the elements of your invention vs the claims, specifications, drawings of the prior art found. It may contain summaries and analyses of how the elements are similar or different, oftentimes the degree of relevance or similarity is also indicated. For a patentability search report sample, download below.
What is a patentability opinion?
A patentability opinion on the other hand, is a legal opinion given by a qualified patent attorney, which analyzes the features of your invention vis a vis the prior art found in a patentability search report. It assesses the likelihood of obtaining a patent in light of the invention’s novelty, non-obviousness, and utility.
While a patentability opinion provides valuable insights, it also does not guarantee success in obtaining a patent for an invention.
How do I conduct a patentability search?
Novelty searches are of course not an exact science, but it helps to have a structured process to document your results. Here are some basic steps that you could follow when getting started with your search.
1. Define the scope
It is important to clearly define the invention’s features, including its purpose, functionality, components. This helps you identify the relevant CPC (a patent classification based on technology area) and formulate the relevant keywords for your search.
2. Identify relevant CPCs
For U.S. patents and patent applications, starting your search by finding the relevant CPC may offer a more focused, narrowed down search. The CPC is a patent classification system jointly managed by the USPTO and the EPO. It is possible that each feature or claim of your invention is covered by different or multiple CPCs.
3. Review the patents under the identified CPC
Now that you have narrowed down your search, you may retrieve all the patents and patent applications under the selected CPC.
Take note of the patents and applications that are the most similar to your invention. Pay attention to the claims, specifications (description), embodiments (drawings).
Citations (both by the applicant and patent examiner) in the prior art are just as important as this can lead you to more sources that may be even outside your technology area.
4. Broaden your search
If the previous steps did not yield results, you may broaden your search by doing the following:
- Perform a keyword search
- Consider foreign patents and patent applications
- Search non-patent literature
Non-patent literature (NPL) often contains early disclosures of inventions, concepts, technologies compared to patent documents. Researchers and inventors would typically publish their work in academic journals or conferences before filing a patent application. Not all innovations become patents so there is a likelihood that you’ll find prior art that may pre-date your invention.
5. Hire a patent search provider
If you’re new to prior art searching, it may be advisable to enlist the help of expert patent researchers, especially those that are subject matter experts in the field of your invention.
Client Success Story
Find out how we streamlined patentability search solutions for a top university research institute.
Performing a patentability search requires reviewing a ton of technical documents from various sources. It requires hours and hours of search optimization and review to cover your bases.
Hiring a team of researchers is advisable especially if you have a multiple claims to be searched and reviewed. For a patentability search to be successful, it must be approached from legal and technical fronts.
Parola Analytics offers patentability searches that are led and reviewed by U.S.-registered patent attorneys and patent agents. This kind of research with both technical and legal approaches can be a cost-effective way to get started on your patentability search, and later on, your patent application.
For more information regarding a patentability search about your invention, you may book a free consultation here.
Maximize innovation potential with expert patentability search
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Expert-led patent research</h3 >
A dedicated US-registered patent attorney, patent agent, and subject matter expert, leading and supervising your invalidity search projects to ensure high quality results.
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Cost-effective, flexible arrangements</h3 >
At Parola Analytics, we are committed to finding the best solutions with our clients. Customize solutions that suit your requirements, budget, and easily integrate them with your workflow.
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Easy-to navigate reports</h3 >
Concise, easy-to-navigate patent invalidity search reports and claims mapping charts that provide you with a clear visual presentation of relevant disclosures.
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Collaborative approach</h3 >
Communicate directly with our patent research analysts at any point to fine-tune your search.
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What our clients are saying
Parola delivered outstanding results!
Vincent and his team at Parola are excellent at locating prior art. We have worked with Parola on two matters, and both times, Parola delivered outstanding results. Parola’s highly-relevant search results and reports demonstrated a thorough understanding of the patent claims.
Daniel KiangKnobbe Martens
An outstanding source for our IP firm
Parola Analytics is an outstanding resource for our boutique intellectual property firm. Patentability searches are the first step for new patent clients. Vincent and his team take care of this crucial step, and provide us with high-quality and comprehensive search reports.The search reports provide our clients with a clear visual representation of the state-of-the-art and make our counseling even more impactful. Our patent practice is enhanced by Parola Analytics’ search capabilities, and our favorite find is Parola Analytics.
Justin H. CrossHamiltonCross LLP
Highly recommended for patentability searches!
It was an absolute pleasure working with Parola Analytics. Vincent Violago is very responsive and professional. He answers all your questions and ensures the right person does the search. The patentability report provided is very visually pleasing and easy to follow. The searcher (who is a PhD chemist and registered US Patent Agent) took great care to understand the claim language of a biotech invention prior to doing the search. A very thorough search was done in a timely and efficient manner. I highly recommend Parola Analytics for patentability searches.
Imtiaz BillahTorrey Pines Law Group
Perfect fit for us startups
Parola Analytics is the perfect fit for us, start-ups. They offered us the flexibility we needed for our unique needs. We received high quality results fast at competitive prices.
Alfredo CaranzaCEO & Technology Consultant
i6 Technology
Reliable, responsive, and effective
We’ve been very pleased with Parola’s search results. They’ve proven themselves to be reliable, responsive, and effective
Nick BoyarskiHatch Patents
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What is a patentability search?
A patentability search, also known as a novelty search, can help determine if an idea or invention satisfies the patentability criteria of novelty. To some extent, a patentability search can also provide insights regarding the non-obviousness criteria, by presenting a combination of references that disclose the different elements of the invention. Find out more about patentability searches here.
A patentability search is an important step that each innovator or organization must consider before investing significant resources in the patent application process, or even at the early stages of research and development.
By identifying prior art that may disclose similar elements as your invention, a patentability search can do the following:
- Assess novelty of your invention
- Strengthen patent applications
- Design around existing patents
- Minimize infringement risks
Parola Analytics offers a comprehensive patentability search service that leverages the expertise of our team of U.S. patent attorneys, patent agents, and subject matter experts covering various high-technology and life sciences topics.
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What we deliver
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Access to a network of patent experts</h3 >
A dedicated US-registered patent attorney, patent agent, or subject matter expert, leading and supervising your patentability search projects to ensure high quality results.
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Comprehensive search </h3 >
Expanded coverage of patent and non-patent literature, U.S. and non-U.S. patents.
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Easy-to navigate reports</h3 >
Concise, easy-to-navigate patentability search reports which include claims and technical mapping charts that provide you with a clear visual presentation of relevant disclosures.
-
Collaborative approach</h3 >
Communicate directly with our researches at any point to fine-tune your search.
-
Cost-effective, flexible arrangements</h3 >
Customize patentability search projects that suit your requirements, budget, and easily integrate them with your workflow.