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What Is A Patentability Search? How Does It Differ From An FTO Search?

This article will explore the concept of patentability searches as well as giving you advice on how you would go about doing this type of search.

The aim of a patentability search is to find out if it is worth producing a patent for an idea that we have. Is there any kind of publication out there in the world that would stop us from doing this?

What is patentability?

There are four different requirements that a potential patent must have to be considered for patentability as stated by the World Intellectual Property Organization (WIPO). These are (they are the specific patentability requirements stated by WIPO but these slightly differ between jurisdictions):

  1. Patentable inventions
  2. Novelty
  3. Inventive step 
  4. Industrial applicability and disclosure requirements

Patentable Inventions

There are ideas of a particular nature that are immediately not considered to be patentable. These exceptions include mathematical theories, aesthetic creations, software, diagnostic methods, inventions contrary to morality and plant/animal varieties.

Novelty

By definition, novelty is the quality of being new, original or unusual. For a patent, this means any idea that conflicts with any prior art where prior art is everything made available to the public by any means before the filing of the patent application. So a single prior art reference will immediately defeat the novelty requirement for the invention if it contains all the limitations of the claimed invention.

Inventive step

For an invention to pass this requirement it must be considered to be not obvious to someone who is skilled in the particular technical field with regard to prior art whereby skilled means someone who has knowledge of the technical field but is devoid of any imagination or creativity. Obvious in this case will mean something which would not go beyond the natural progress of technology in this field.

Industrial applicability and disclosure requirements

In terms of the industrial applicability, the invention must be seen to be able to be made or be used in any kind of industry. In terms of the disclosure requirements, these vary between jurisdiction but they are generally considered to be "enablement" and "written description". The enablement requirement states that a person skilled in the field can use and make the claimed invention without undue experimentation. The written description requirement states that the specification of the patent describes the claimed invention in enough detail that a person skilled in the field can reasonably conclude that the inventor "had possession" of the claimed invention.

How should I do a patentability search?

To do a patentability search as well as searching for patents as you would for an FTO search, you would also need to look at websites, scientific journals, industry publications, general media and anywhere where there might possibly be prior art relating to your idea during this search.

In terms of searching for patents for a patentability search, PatSnap is a good tool to do this and there are multiple different parts of the platform that can help you do this. Probably the best one of these to use to perform this task is Landscape.

To use Landscape for this kind of search, once you have got the results for your search click on the "Landscape" button to be able to generate a Landscape for this search. Once you have done this tick the "Show All" box under the "Chart" option on the left-hand side of the screen to be able to view the patents on the Landscape.

After you have done this, click on the "Text Analysis" option on the left-hand side of the screen and click on the button that says "Add Text Paper". After you have done this, input your idea into the text box and click "Add". Once you have done this you will see where your idea sits on the Landscape.

If you see that your idea sits in quite a sparse area in terms of patents then they may be white space opportunities available to you with your idea. It is also a good idea to view the patents near where your idea is sitting within the Landscape since this enables you to see what sort of technologies are considered similar to your idea.     

Another way of searching for patents for a patentability search is by using Insights (if you do not have Insights yet, speak to your account manager if you are interested in getting it).

The first way to use Insights for this task is by using the "Renewal And Abandonment Rates" graph which is shown under the "Portfolio Renewals Rates" option in "Portfolio Analysis":

The patents you want to view on this graph are the patents that were abandoned and you can view these by selecting the abandoned patents for each year. From viewing these patents you can see what ideas are currently available for you to operate with.

Another useful graphic to use in Insights to perform this task is "Highest Market-Valued Patents" which is shown under the "Market Valued Patents" option in "Portfolio Analysis":

On the right-hand side of this graphic you can see an estimation of the lifespan of these patents which will allow you to see when these patents will expire and from this when you will have freedom to operate with these ideas.      

When is the best time to do a patentability search?  

Although it is always useful to do a patentability search sometimes there be times along the developmental process of the invention that it may be too early or too late to do the search. If you do it too early, your invention might evolve and change so much during development that it no longer matches the original searches you performed. On the other hand, if you do it too late, then if you do find prior art that would stop you from obtaining a patent, you may well be too far down the line in terms of development to be able to sufficiently change your invention. 

What should I do if I think I've found preventative prior art?

If you do find prior art that could prevent you having a patent granted, there are various different things to consider before immediately giving up on your invention:

  • Double check and obtain advice as well to make sure the prior art actually does contain all the limitations for the invention.
  • If the prior art that may be preventing your patent from being granted is not a patent you may well still have freedom to operate with your idea.

 

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