Patentability Search

Purpose of a Patentability Search

• (a) NOVELTY ASSESSMENT: identify prior art that anticipates (or could anticipate) the invention — finding identical or nearly identical prior disclosure
• (b) OBVIOUSNESS ASSESSMENT: identify prior art that renders the invention obvious — a combination of references that would have led a POSITA to the claimed invention
• (c) CLAIM DRAFTING GUIDANCE: knowing the prior art landscape allows the drafter to write claims that are broad where the art allows and narrow where it doesn't
• (d) FILING DECISION: a patentability search can reveal that the invention is clearly not patentable — saving the cost of a full patent application
• (e) SPECIFICATION DEVELOPMENT: understanding the prior art allows the specification to accurately characterize the field of the invention and the problems being solved

The Duty to Search

• Applicants and counsel have a duty of candor to the USPTO under 37 C.F.R. § 1.56
• Material prior art found in a patentability search must be disclosed in an Information Disclosure Statement (IDS)
• Failure to disclose material prior art can result in inequitable conduct and patent unenforceability

Practical Benefits

• A patentability search reduces prosecution time and cost by identifying issues before filing
• A well-searched application typically avoids unexpected prior art rejections

Who Should Conduct it

• A professional patent searcher with expertise in the technology area
• Patent attorneys and agents with the relevant technical background
• In-house IP teams with proper database access.

What Counts as Prior Art (Post-aia)

• Under 35 U.S.C. § 102: (a) prior patents and published patent applications anywhere in the world
• (b) printed publications anywhere
• (c) prior public use, sale, or offer for sale in any country
• (d) other public disclosures
• For a patentability search, the search focuses on (a) and (b) since they are in searchable databases

Patent Databases

• USPTO Patent Full Text Database (PatFT): full text of issued US patents back to 1976
• USPTO Patent Application Full Text Database (AppFT): published US patent applications
• EPO Espacenet: patent documents from 90+ countries
• WIPO PatentScope: PCT applications and national filings from member states
• Google Patents: accessible interface with translation
• Commercial: Derwent Innovation (owned by Clarivate)
• Questel Orbit
• PatSeer
• AcclaimIP (all provide broader coverage and better analytics)

Non-patent Literature (NPL)

• Scientific journals (PubMed for biotech/pharma; IEEE Xplore for electronics; SciFinder for chemistry)
• Conference proceedings
• Standards (ISO, IEEE, ANSI)
• Technical reports
• Prior product documentation

Search Strategies

• Classification search (CPC/IPC codes by technical subject)
• Keyword boolean (technical terms, synonyms, variations)
• Inventor name search (find related work by key researchers)
• Assignee search (find patents held by major players in the space)

Classification Matters

• CPC classification search is typically the most reliable — it's organized by technical content
• A skilled searcher identifies the 3-5 CPC codes that are most relevant and searches within those

Search Depth

• A basic search may cover 1-2 hours of database searching
• A thorough search for complex technology may require 8-20 hours
• Professional search firms typically provide a 30-60 page report with annotated references.

The Fundamental Analysis — Novelty

• Does any single reference disclose all elements of the claimed invention? If yes: the invention is anticipated — not patentable as claimed
• Solution: amend claims to include limitations not disclosed in the reference
• Or the invention may not be patentable if the feature that makes it distinct is not new

The Fundamental Analysis — Obviousness

• Would a combination of references make the claimed invention obvious to a POSITA? This requires: identifying which references, in combination, show all elements of the claim
• Identifying a motivation a POSITA would have to combine them
• Concluding the combination would have been obvious to try or predictable

The Claim Drafting Response

• A good patentability search translates directly into claim strategy: broad claim: draft as broadly as the prior art allows — include only the elements not found in any single reference
• Dependent claims: include features shown in the prior art as dependent claim fallbacks — they serve as claim differentiation evidence

The 'Not Found' Caveat

• A clean search result means the searcher didn't find blocking prior art — not that it doesn't exist
• Unpublished pending applications (within 18-month window) cannot be found
• Poorly classified patents may be missed

Information Disclosure Statement (IDS)

• All material prior art found in the search must be disclosed in an IDS to the USPTO
• Material = prior art a reasonable examiner would consider important in deciding whether to allow the claim
• Over-disclosure is safe (cite borderline references to be safe)
• Under-disclosure risks inequitable conduct

Search Report Quality Markers

• Specific citations with independent claim comparison
• Annotation explaining relevance of each reference
• Recommendation on patentability likelihood
• Suggested claim scope based on search results.

Question Answered

• Is my invention novel and non-obvious enough to be patented? FOCUS: finding prior art that anticipates or makes obvious the invention
• Can be any prior disclosure — expired patents, academic papers, old patents
• Expired art is as relevant as current patents for patentability
• Prior art disclosed before the effective filing date is relevant

Methodology

• Primarily concerned with the SUBJECT MATTER of the prior art reference
• What does the reference TEACH? Is the same concept known? EFFECTIVE DATE: prior art dated before the effective filing date is the concern

Question Answered

• Can I commercialize this product without infringing any valid, in-force third-party patent? FOCUS: finding UNEXPIRED patents with CLAIMS that read on the product
• Expired patents are IRRELEVANT to FTO (a product only infringes unexpired, valid patents)

Methodology

• Focused on the CLAIMS of in-force patents and whether they read on the product
• Claim mapping required

Result Used for

• Commercial clearance decision
• Licensing decisions
• Design-around opportunities

Key Differences Summary

• Patentability search: finds all prior art that could prevent patenting
• Includes expired and non-US patents
• Is about novelty/obviousness
• FTO search: finds only unexpired US (or country-specific) patents with claims that read on the specific product
• Is about avoiding infringement

Overlap

• The same databases are often searched
• But the analysis is fundamentally different
• A patent that is highly relevant to a patentability search may be irrelevant to FTO (if it expired)
• And a patent that blocks FTO may be irrelevant to patentability (if it was filed after the invention).

Types of Searchers

• (a) PROFESSIONAL PATENT SEARCH FIRMS: specialize in patent searching
• Used by most large patent firms
• Typically $300-$1,500 for a search report
• Turnaround 3-10 business days
• Quality varies widely by firm and searcher
• (b) PATENT ATTORNEYS AND AGENTS: some perform searches in-house
• Better for interpreting results
• Higher cost if billed at attorney rates ($350-$600/hour)
• Often use professional search firms and then layer on their own analysis
• (c) IN-HOUSE IP TEAMS: can be cost-effective for high-volume filers
• Require trained searchers with database access
• (d) INVENTORS: can conduct a preliminary search using free tools (Google Patents, USPTO PatFT)
• Often miss relevant references due to poor classification knowledge
• Not a substitute for a professional search

Free Tools

• Google Patents: easiest to use
• Good for keyword searching
• Search coverage for US, EPO, and WIPO
• USPTO PatFT/AppFT: full text of US patents since 1976
• Espacenet: European Patent Office's free database

Cost Benchmarks

• Basic search (professional firm, simple technology): $300-$700
• Thorough search (professional firm, complex technology): $700-$2,000
• Attorney analysis of results + search: $1,500-$5,000 total

When a Thorough Search is Most Important

• Before filing in a crowded technology space (many existing patents)
• Before a large investment in development or product launch
• When the commercial stakes are high
• When the inventive step is narrow and the prior art landscape is dense

When a Basic Search May Suffice

• Provisional application (just to establish a priority date and test the concept)
• Very early stage with no immediate intention to file a full application
• Fast-moving space where early filing date is more important than perfect claim scope.