Do I Need to Perform a "Patentability Search” for My Invention?

While some companies may perform a patentability search as part of their normal procedure for determining whether to file a patent application on a particular invention, other companies may be just as intentional about avoiding any patentability search during the development of an invention and filing of a patent application. Either of these policies or procedures is perfectly fine. However, inventors, their patent counsel and anyone else involved in the prosecution of a patent application has a duty to disclose any information that a patent examiner might find to be material to patentability of a patent application directed to the invention. Accordingly, any information obtained because of a patentability search should be either submitted to the USPTO in an information disclosure statement (IDS) or at least evaluated for submission. If an inventor or other person involved in the prosecution is aware of material prior art, failure to submit that material prior art to the USPTO may leave any resulting patent subject to potential invalidation on the basis that the inventor or other involved person failed to live up to their duty of candor to the USPTO.

Reason 1: The Inventor Is New to The Subject Matter of The Invention

I sometimes recommend a patentability search in situations where the inventor does not have much experience in the field of the invention. In my patent prosecution practice, it frequently happens that an inventor has become frustrated with a problem that is a common experience among a large group of people. For example, many people have had the experience of driving a car behind another car that is applying their brakes. The illumination of brakes lights communicates the fact that the other driver is applying the brakes. However, brakes lights are either on or off and do not convey any information about how hard the brakes are being applied and how rapidly the car is decelerating.

Because this is a widespread common experience, there have been numerous attempts to design brake light systems to inform adjacent drivers about the rate of deceleration and, as a result, there is a lot of prior art dealing with these systems. So, I would typically suggest a patentability search for an inventor that has no formal experience working in the field of the invention. However, if the client was a microbiologist or an environmental engineer and the invention was the result of applying their technical expertise in this field, then I might not feel that a patentability search was particularly helpful.

Reason #2: The Inventor Needs Investment to Develop the Invention Into a Commercial Product

Even if the inventor has substantial experience and expertise in the field of the invention, a patentability search may be useful if the development of the invention into a commercial product or new business enterprise will require a significant investment of money. While some invented products may be produced in small quantities in the inventor’s garage with existing equipment, other invented products may require new facilities and expensive technology to even make the first batch of the invention. In the later situation, a rational investor may want to see evidence that there is a high probability of the invented product being patentable. The results of a patentability search may provide that evidence. For example, an individual that is experienced in performing patentability searches may essentially duplicate the same search process that a patent examiner will perform after a patent application is filed. A patent attorney may review the search results and apply the teachings of the prior art in the search results to the invented product in view of the patentability standards. A thorough patentability search report may document the findings and conclusions of this process so that an investor may understand the potentially patentable features of the invented product, if any. While the results of a patentability search and the conclusions of a patentability search report are not perfect and require several assumptions and qualifications, the insights provided by this research may assist an investor in determining whether to invest. After all, an issued patent provides the patent owner with the right to exclude others from making, using and selling the patented invention for a period of up to 20 years from the date of filing, subject to the timely payment of maintenance fees at three times during the life of the patent. This exclusivity can yield high returns on investment.

What to Do with The Results of A Patentability Search

As suggested above, the results of a patentability search may be used to convince an investor to invest in a company that owns the rights to the invention. However, patentability searches and patentability search reports are not perfect and there is always the possibility that material prior art is not located in the search or that the implications of certain prior art is not fully appreciated at the time the report is prepared. For these reasons and others, I view the patentability search as a better tool for ruling out patentability (a negative determination) than for supporting patentability (a positive determination). Accordingly, the primary objective of a patentability search and opinion may be to determine whether we can quickly rule out patentability. If a prior art reference disclosing the entire invention can be quickly identified, then the inventor can avoid the expense of preparing and filing a patent application. Accordingly, the investment in a patentability search may have a high return on investment.