This article frames out the characteristics of a high-quality patentability search. As an intellectual property (IP) consulting firm that has its foundation in IP research work, we may be a bit biased. However, we feel it is incredibly important that all important intellectual property decisions are based on high-quality research. I mean, would you make any other important decision without first performing good research?

Why do a patentability search?

Determining whether to file a patent application should not be taken lightly. Patents can be expensive to acquire and maintain, and once you have a patent, it can become expensive to enforce. It is best to expend the effort to understand if your idea is truly patentable before starting down this path.

The reason, though, that patents are important is because they can truly be valuable assets to an inventor or company. They not only can provide a strategic advantage by providing exclusivity to the patent-holder, but they often represent lucrative financial streams of their own through licensing or sale. For these reasons, the expense of getting and maintaining patents often make sense. However, not all patents have value. The ones that are most valuable provide the broadest coverage in their niche, while also being able to hold up to challenges.
Performing a high-quality patent search before filing your application is one way to ensure your patent not only gets approved, but it also enables the application to be drafted in such a way that the resultant patent has the greatest value by being both broad and strong. If you are putting forth the time, effort, and expense to get a patent, you want to make sure that patent creates maximum value. An old – but good – article that explains what makes a patent valuable can be found here.

Characteristics of a good patentability search

A high-quality patentability search consists of a comprehensive and thorough examination of existing patents, patent applications, and other literature related to a particular invention. The search is conducted to determine whether the invention is novel, non-obvious, and therefore potentially patentable. Here are some key characteristics and attributes of a high-quality patentability search:

1. Comprehensive: The search should be exhaustive and cover all relevant literature, including patents, patent applications, academic journals, conference proceedings, and other publications.
2. Accurate: The search should be conducted by experienced and qualified patent searchers who are familiar with the relevant technology and have a good understanding of the patent system. The searchers should use appropriate search strategies and techniques to ensure that the search results are accurate and relevant.
3. Precision: The search should use precise search terms and search strings to ensure that all relevant literature is identified and retrieved.
4. Timely: The search should be conducted in a timely manner to allow sufficient time for review and analysis of the search results and for filing the patent application within the required time frame.
5. Clear and concise: The search report should be clear, concise, and easy to understand, with all relevant prior art cited and organized in a logical manner.
6. Relevant: The search should be focused on the specific invention being researched, and the searchers should be able to distinguish between relevant and non-relevant prior art.
7. Proper documentation: The search should be properly documented, with detailed notes and a clear audit trail, to ensure that the search process can be replicated and defended if necessary.

Conclusion

Overall, a high-quality patentability search requires a combination of expertise, precision, and thoroughness, enabling an analysis that provides the inventor with the information needed to make informed decisions about the potential patentability of their invention and the information to draft an application that will result in a more valuable patent. The outcome of the search should provide a clear understanding of the prior art landscape, identify any potential obstacles to patentability, and provide guidance on how to proceed with the patent application process for achievement of optimum value.

If you would like to explore options for having a patentability search performed by experts who understand the importance of giving you the information needed to optimize your patent application filings, contact us today.