— Jessica Gutierrez Alm, Attorney
This is a common question among many new inventors. To be patentable, an invention must be novel and non-obvious in view of the “prior art.” Prior art includes prior filed patents, patent applications, and other public materials. A patententability search, or prior art search, can give the inventor an idea of what the prior art landscape looks like. If performed before filing an application in the Patent Office, a patentability search can provide an inventor with direction as to how to potentially overcome the prior art, or in some cases can even suggest that an invention may not be patentable. However, a search can be costly and does not provide a definite answer as to patentability. Inventors should keep some important considerations in mind when deciding if a search is right for their situation.
What does a prior art search cover?
A patent search can range in depth from a quick Google search to a professional, global search performed by a patent search company and reviewed by an attorney. The scope of a search may depend on the inventor’s knowledge of the field of invention, the breadth of the invention, and cost considerations.
Notably, a patent search can include not just patents and patent applications, but also non-patent literature, such as trade journals and research papers. Any type of public document—even a blog post—can be citable prior art against a patent application.
A comprehensive prior art search should search for not only the same invention, but similar inventions and inventions in other fields of endeavor.
Doesn’t the Patent Office perform a search?
Yes, but only after the application is written and filed. As part of the application process for seeking patent protection, the U.S. Patent Office will perform its own search and cite results as rendering the application anticipated (not novel) or obvious.
An independent patentability search can help an inventor make decisions before the application is written and filed.
What does a prior art search NOT cover?
This, generally, is the catch with any patent search.
First is an issue of dates in the slow-moving Patent Office. When a patent application is filed, it does not become publicly accessible (i.e., it won’t turn up in a prior art search) for 18 months. But, at any point during that 18-month period, another inventor might file a new application. The earlier application will be prior art to the later application, even though the earlier application was unpublished when the later application was filed. Thus, any search effectively has an 18-month “black hole” in which the patent applications most recently filed in the Patent Office are undiscoverable. Generally, this may only be a problem when inventions relate to cutting-edge improvements and new technologies.
Secondly, prior art searches are, by nature, subjective. Whether the search is performed via Google, on the USPTO website, or in a global patentability database, the search results are only as good as the particular search terms used. This can be problematic because, when the Patent Office performs its own search after the application is filed, the Office may find and cite references that were not necessarily discovered by the inventor’s earlier search.
Do I have to tell the Patent Office what I found?
Yes, inventors and their attorneys/agents have a duty to disclose to the Patent Office information that is “material to patentability” with respect to a patent application. In practice, this means that an inventor has a duty to disclose the art that results from a patentability search.
Can I do my own prior art search?
Of course. There are many resources to help guide inventors in performing prior art searches. However, for the reasons described above, any search has its limitations and it is still advisable to have a patent attorney or agent review the results.
It thus becomes clear that the decision to perform a prior art search requires consideration of many factors, and is unique to each situation. A prior art search can help an inventor make key decisions before filing a patent application, but a favorable search is no guarantee of patentability.