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Patentability Searches: Weighing the Pros and Cons and Exploring Recent Developments

July 24, 2023

In the dynamic world of intellectual property, patents play a crucial role in safeguarding innovation and encouraging technological advancements.  One possible step in the patenting process is conducting a patentability search, also known as a prior art search, which involves assessing the novelty and inventiveness of a proposed invention.  Patentability searches have evolved over time, adapting to technological advancements and changing legal landscapes.  In this blog post, we will delve into the pros and cons of patentability searches and explore recent developments in this field.

Benefits of Patentability Searches:

1.  Assessing patentability: Patentability searches provide an analysis of existing prior art, which might include published patent applications or patents and, in some cases, scientific literature and other relevant documents, to determine the novelty and non-obviousness of a proposed invention. By conducting a thorough search, inventors and companies can ascertain the likelihood of obtaining a patent for the proposed invention, helping them make informed decisions about pursuing the patenting process.
2. Cost savings: Investing in a patent without conducting a prior art search can be risky. Patentability searches enable inventors to identify particularly relevant prior art references that may be pertinent to the novelty of their proposed invention. By identifying potential barriers early on, inventors can save considerable costs associated with drafting and prosecuting a patent application that might have a low chance of success.
3. Enhancing patent quality: By uncovering existing prior art related to a proposed invention, patentability searches aid in drafting stronger patent applications. The search results provide valuable insights into the prior art landscape, allowing inventors to better define the scope of their proposed invention and craft claims that avoid the prior art and are more likely to receive favourable examination.
4. Strategic decision-making: Patentability searches help inventors understand the competitive landscape by identifying existing patents and technologies in their field. This knowledge empowers inventors to make strategic decisions regarding product development, licensing, and potential collaborations. Although a patentability search is different from a freedom-to-operate search, a patent identified in a patentability search might signal potential infringement issues.

Risks and Limitations of Patentability Searches:

1. Limited Scope: Patentability searches may not uncover all prior art relevant to a proposed invention.  Some prior art may not be easily searchable or may be in a language that is not easily accessible.  Further, the scope of a patentability search is always limited by budget constraints and time constraints.
2. Newly-filed patent applications cannot be uncovered: A patent application is made available to the public 18 months after it is filed.  As such, it is simply not possible to locate any patent applications filed in the last 18 months that may be pertinent to the proposed invention.  This is a particular disadvantage when the proposed invention deals with cutting edge technology.
3. The Patent Office will conduct their own search: Even if one were to conduct a pre-filing patentability search, the patent office will still conduct their own search and may uncover prior art that was not found during the initial patentability search.
4. Time-consuming process: Conducting a thorough patentability search can be a time-consuming task.  Searching through extensive databases, scientific literature, and international patent archives requires expertise, patience, and meticulousness.  Inventors and companies may face delays in the patenting process due to the time required to perform a comprehensive search and analyze the results. For this reason, pre-filing patentability searches are commonly limited in scope to US patent references only and focused on an assessment of novelty in a time-limited search.
5. Uncertainty and subjectivity: Patentability searches involve evaluating the novelty and non-obviousness of a proposed invention based on existing patents and prior art references.  However, the determination of patentability is subjective and can vary depending on the perspective of different patent examiners or legal experts.  The interpretation of prior art references and the application of legal standards can introduce uncertainties in the outcome of a search.

Recent Developments in Patentability Searches:

Recent advancements in AI and machine learning promise to revolutionize the field of patentability searches.  Some AI-powered tools can analyze vast amounts of patent and non-patent literature, offering the potential for more efficient and comprehensive searches.  These tools employ natural language processing and data mining techniques to extract relevant information and identify potential prior art references.  They allow for more targeted patentability searches and allow for a significant amount of time to be saved in the process of completing a prior art search. 

Publicly available patent databases have also evolved significantly, providing more user-friendly interfaces and powerful search functionalities.  Many patent offices now offer sophisticated search platforms, enabling inventors and patent professionals to conduct complex searches using various criteria such as keywords, classifications, citations, and semantic analysis.  These improvements have enhanced the accessibility and efficiency of patentability searches.

The increasing integration of AI and machine learning along with the continuous development of more powerful and more user-friendly patent databases may allow patentability searches to be more time efficient and comprehensive.  However, the interpretation of a prior art search remains a subjective exercise, and thus still demands the skills of a patent agent or legal expert to make the correct call in evaluating a patent's novelty and non-obviousness. 

Conclusion

Patentability searches offer several advantages for inventors and businesses considering filing a patent application.  They provide insights into prior art and minimize legal risks and potential wasted expense.  However, it is important to recognize the limitations and potential drawbacks associated with these searches, such as the limitations of publicly available information, complexity, subjectivity, and the possibility of a false sense of security.
Ultimately, inventors and businesses should consider conducting a patentability search as an important possible step in the patenting process.  However, it is equally important to seek guidance from patent professionals, who can help navigate the complexities, interpret search results, and provide strategic advice to maximize the chances of obtaining strong patent protection for their inventions.