What is a patentability search?

What is a patentability search?

A patentability search is conducted in respect of a proposed idea and is intended to identify disclosures (often, but not necessarily, patent publications) which would prevent (or should have prevented) patent protection being secured for the proposed idea.

Often, a search of this type can be useful to provide information on a widest possible scope of protection which might be possible. However, there is no guarantee that all relevant disclosures have been found. In other words, even if a patentability search does not find any existing disclosure of the proposed idea, it is still possible such disclosure exists elsewhere and that patent protection for the proposed idea would be unavailable.

This is the same type of search that patent offices will conduct as part of the patent application process, though it is unusual for two independent prior art searches for the same idea to find exactly the same disclosures.

Clients may conduct a pre-filing patentability search to decide whether to spend the significant time and effort preparing a full patent application, which usually costs more than the patentability search.

Nevertheless, a patentability search may not be the best way to spend your money, for the reasons explained below.

If you are operating in a field in which you have limited or no knowledge of the current state of the art (perhaps you are moving into a field which is new to you), a patentability search can be particularly useful. This is because if your idea is ubiquitous in that field, there is a reasonable chance that a competent patent searcher would uncover relevant documents even by only spending a couple of hours on your patentability search. On the other hand, if your idea is only described in a very small number of obscure disclosures, it is likely that this will not be found in a basic patentability search. Whilst a more comprehensive patentability search can be commissioned which would increase the chance of identifying your idea in more obscure disclosures, this may bring the costs closer to the cost of drafting and filing a patent, still with no guarantee that any relevant disclosure would be found.

Conversely, if you are operating in a field you know well, the patentability search is less likely to tell you anything you don’t already know. As mentioned above, if your idea is described only in an obscure disclosure of which you are unaware, it is likely that this will not be found in a basic patentability search.

Nevertheless, it is generally considered that a pre-filing patentability search allows you to take a more informed decision on whether to commit the time and money to preparing and pursuing a patent application. This is not, however, the whole story.

A more controversial point is that too much knowledge can sometimes be a bad thing. Many of the high-growth technology start-up businesses I work with are seeking investment, and to ward off competition. Patents are seen as an important part of this process. As mentioned above, two different patentability searches often return different results. Therefore, it’s possible that prior art found in a pre-filing patentability search may never be found in a subsequent prior art search conducted by a patent office. Indeed, there are likely to be many granted patents on patent registers around the world which are directed to ideas that are already known. Technically, such patents could be revoked for being invalid. Nevertheless, these patents still have significant value to their owners. It is likely that some of the patents have been used to secure investment for the patent owner. It is also likely that some of the patents have been used to secure a license income from competitors. Indeed, some of the patents are likely to have themselves been the subject of patentability searches by third parties, as discussed further below.

Ultimately, whether to conduct a pre-filing patentability search depends on your own understanding of your technical field, as well as your attitude to risk.

Another use of a patentability search is to attempt to identify disclosures which render a third party’s patent rights invalid for lack of novelty or lack of inventive step. If relevant disclosures are found, these can form the basis of actions for invalidity (such as an Opposition to a European Patent, or third party observations), or as the starting point in a more informal conversation with the third party when trying to secure favourable license terms to use the patented concept. In such cases, the patentability search may be referred to as an “invalidity search”.

A sensible budget for commissioning a patentability search and receiving associated advice on the search results is £1,200 - £4,000 + VAT, though costs may be higher for a more comprehensive patentability search to identify relevant disclosures in support of invalidity actions.

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