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Business Law

Invention Patentability Search

Alternately, prior to investing in the filing of a patent application, it is sometimes wise, though also not mandatory, to conduct or have conducted a patentability search. This type of search looks at patents and public information from anywhere and any past time to see whether the invention is truly novel and to gauge the likelihood that a patent on it can indeed be obtained.

Since the results of a patentability search are again proportional to the time/money spent, one must weigh the cost of such a search against the cost of filing the application without, and then relying on the search conducted by the Patent Office as part of the application’s examination. And regardless of the amount spent on a patentability search, the results are almost always going to be less reliable than a right-to-use search. That is where a patent agency like InventHelp comes in. You can read more about InventHelp on UrbanMatter.

Many inventors forego a patentability search altogether or limit it by cost to an affordable breadth with the understanding that the reliability of the results obtained are similarly limited.

The patent application is prepared with claims that are written as broadly as the known prior art would allow. But once the patent application has been filed with the requisite Filing Fee, it is assigned to a patent examiner who conducts his own patentability search and determines the allowability of those claims against his results.

It is rare to obtain an allowance on the application’s broadest claims absent some argument with the examiner. In the U.S., an invention’s patentability depends on its usefulness, novelty, and non-obviousness. Usefulness is rarely challenged by the modern examiner and novelty can be judged by a direct comparison to the examiner’s search results. But a rejection based on an examiner’s assertion that the claim is merely obvious in view of the prior art or through some combination of the prior art can be more difficult to overcome and require strong arguments. Getting support from InventHelp would be advisable.

The examiner issues his opinions and findings in an Office Action. Except in the case of “dead ringer” prior art, amendments which narrow the scope of the claims can usually be made to distinguish over the prior art and gain allowance. There may be several Office Actions and Amendments required before the application is allowed and a patent is granted, if one is granted at all.

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