Patent Search

A patent search is a search to see if something has already been patented by another person or entity. Patent searches are done at the USPTO (“United States Patent and Trademark Office”) and WIPO (“World Intellectual Property Organization”). Patent searches are the first step in a patentability search, which is an investigation of “prior art” to see if your invention or discovery is patentable. 

I help clients conduct patentability searches to save time and money by determining if a patent can be granted on the client’s invention and how broad the claims can be. This reduces time and money spent on responding to office actions to correct the patent while also obtaining the most legal protection possible.

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Patentability and Prior Art

To be patentable, an invention or discovery must (1) fall under a statutorily patentable subject matter, (2) not be “anticipated” by prior art, and (3) not be made “obvious” by prior art. 

Statutory Categories

  1. Processes
  2. Machines
  3. Manufactures
  4. Compositions of Matter

There are exceptions to these categories that disqualifies something from being patent eligible. This includes abstract ideas, laws of nature, natural phenomenon, and new uses of machines that do not amount to “substantially more” than the original machine.

Prior Art

Prior art is used to determine whether subject matter has been anticipated or made obvious. Prior art includes patents as described above, but also includes:

  • Issued Patents
  • Published Patent Applications
  • Unpublished Patent Applications
  • Foreign Patents and Applications
  • Printed Publications
  • Public Use
  • Public Knowledge
  • Offers for Sale
 
patent search data

Anticipation by Prior Art

Anticipation occurs when prior art teaches each and every element of the subject matter. All elements must be taught in a single piece of prior art for anticipation to occur. Thus, if a patent application teaches 4 out of 5 of your subject matter’s elements, and another patent teaches the 5th element, your subject matter is not anticipated. However, this would fall under obviousness as discussed below.

Obviousness under Prior Art

Subject matter is considered obvious when the prior art can be combined to teach the subject matter, or when the difference between what already exists and the subject matter would be obvious to one skilled in the art. Therefore, if combinations of prior art teach your subject matter, your subject matter is not patent eligible.

Steps to Patentability Searches

  1. Issued Patent Search at USPTO & WIPO
  2. Published Patent Application Search at USPTO & WIPO
  3. Provisional Patent Application Search at USPTO & WIPO
  4. National internet search for printed publications
  5. Search for scholarly publications
  6. Search for offers for sale

Once the prior art is gathered, a legal determination must be made as to whether the prior art makes the subject matter unpatentable, or whether claims can be amended to reconcile the prior art and obtain a patent.

A patentability search should always be done before filing a patent application. The patentability search gives you insight as to whether you have a chance to obtain a patent and it also shows you how narrow or broad you can draft the claims. This directly affects your legal protections and drafting overly broad claims will cost you time and money to correct. Therefore, a patentability search saves you time, money, and helps get you the broadest legal protection possible. 

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