Patent Search vs. Patentability Opinion

Before deciding to pursue patent protection, it is a best practice to gauge the patent landscape behind your inventive concept to determine whether that concept can fit within that landscape without being overly narrow.

Patent Search

The purpose of a patent search is to locate granted patents and patent applications (aka prior art) that may affect whether your inventive concept is patentable. A patentability opinion is a professional recommendation of how your patent application would fare during examination.

At Intellent Law, a patent search yields a search report that includes a formal record of the search terms used throughout the search, a summary of the USPTO and CPC classifications the inventive concept may fall under, and two lists of prior art references. The first list is a novelty list and consists of prior art that disclose all the elements of your inventive concept. The second list is an obviousness list and consists of prior art that share one or more elements with your inventive concept.

Patentability Analysis

A patentability analysis is best done after a prior art search. However, a search may be unnecessary if you, the inventor, have already performed one, or knows the patent landscape sufficiently to provide the practitioner with enough information to provide a patentability opinion. Patentability is determined based on the risk of receiving a novelty or obviousness rejection in light of the prior art. The analysis also includes a professional recommendation of what type of patent application should be filed at the invention’s current stage of development.

Some practitioners argue that a patent search can form biases that can affect the quality of the patent draft. This can happen if specific wording was used to describe components that are also found in your inventive concept. However, diving into a patent application without carefully weighing the risks is not only not advisable but also highly unprofessional.