Limitations of Patentability Searches
Purpose of Patentability Searches
The purpose of a patentability search is to better assess the likelihood of securing patent protection for an invention. In other words, it is a cheap risk mitigation procedure against surprises from patent examiners. Also, if the results of a patentability search appear to be sufficiently favorable, then the results of a search can be of assistance in defining the content of one's own patent application.
A patentability search is NOT an infringement search. In other words, the purpose is not to determine whether the manufacture, use or sale of what is thought to be an invention might infringe one or more existing patents. It is possible to have an invention which is patentable but which also infringes one or more other patents.
Scope of a Routine Patentability Search
The scope of a routine patentability search in the PATEX Office is essentially restricted to the patent "prior art" patent data accessible through electronic databases. "Prior art" means in general the accumulated, published technical knowledge of all mankind. A patentability search is usually restricted to selected classifications of earlier patents, selected from the United States Patent Office or International Patent Classifications.
A search within selected classifications of United States patents will not necessarily include review of all patents in those classes, but will represent the best effort of PATEX staff in screening patent data based on our years of experience in the field. If a client is willing to pay for a higher level of security, we are willing to provide international searches to include patents or publications from other countries that might be similarly classified.
Regarding the test of international novelty applied by patent examiners, it is important to understand that a patent or printed publication existing anywhere in the world, which describes or suggests an invention can, in theory, represent a barrier to a patent application or to the issuance of a valid patent.
Likewise, it is important to understand that a patent application or a valid patent may be barred not only by prior patents or other publications but, in many countries, by prior public use or sale of an invention, or by prior disclosure of the invention by any means whatsoever. The rules here will vary from one country to the next. But, the important point is that a routine patentability search will not include any investigation for such things as prior public use or sale, prior disclosures other than within selected classes of patents as indicated above or other sorts of prior disclosures that might occur.
If the client knows of any prior disclosures in whatever form and regardless of where in the world that they might have occurred, then we should be informed in order to conduct the best possible search.
Limitations on the Accuracy of Patentability Searches
The accuracy of a routine patentability search is limited for several reasons:
- because the scope of the search is itself limited (see above);
- because existing patents may be badly translated, misclassified, or unretrievable due to errors or omissions in the data emanatingfrom various patent offices;
- because one cannot search for something that is not available to be searched (this may sound self-evident, but it is importantto understand, for example, that pending patent applications cannot be searched at all in many patent offices and, in others, only after a certain period of time has elapsed -usually 18 months. Depending on the country and depending on the circumstances, a previously filed patent application can block a subsequently filed patent application. It is theoretically possible to conduct a search on one day -find nothing -- and then to have a relevant patent issue on the next day).
In short, a patentability search has limited scope and limited accuracy. Even if the results appear to be extremely favorable, there is no assurance or guarantee that a patent will be obtained if a patent application is filed or that any patent that is granted will necessarily be a valid patent.
Thus, there is always a risk that the cost of trying to secure patent protection will be lost despite any search that might be done. If a search is done, then the cost of the search itself would also be lost.
With Such Limitations, What Is the Point of the Search?
The cost of preparing, filing and prosecuting or attempting to prosecute a patent application is substantial and will be much greater than the cost of doing a routine search.
Accordingly, despite the limitations, a routine search should normally be considered as a prudent investment. While it will not eliminate the risk of failure, it will often serve to significantly reduce the risk. The results of a routine search will not infrequently suggest that no patent application should be filed -- either because it becomes quite clear that the invention is not validly patentable, or that any patent that might be obtained is likely to be very narrow in scope and easily avoided by competitors. In addition, as noted at the outset, the results of a patentability search can be of assistance in defining the content of one's own patent application. This will sometimes reduce the time and cost required to prepare a patent application.
A manual search may be advisable if the subject matter of the technology is older and substantial prior art may exist further back in time than the scope of electronic databases. For instance, a search of plows and other mechanical earth tilling devices would discover much prior art that was over 30 years old. Routinely, one should generally budget from $75 0 to $ 1,000 for a preliminary review of the invention and a manual patentability search conducted through a registered patent agent.
Patentability searches are usually done on a fixed budget. The PATEX service generally quotes standard searches at flat rate for a given effort. The search budget can be fixed at a greater or lesser amount. However, if it is too low then the quality of the search may suffer. PATEX staff are happy to conduct special prior art searches for any specific application and provide hard estimates.
PATEX searchers have experience in the area of searches for licensing, providing technical solutions, state of the art reviews, and assembling data for patenting around or beyond competitors.
The usual approach is to establish a search budget and, recognizing the limitations outlined above, to then conduct a search within the confines of that budget. Let me know if I can answer any questions or concerns on the above.
Ron Simmer, PATEX