Wilson Lue LLP Patent & Trademark Agents, Intellectual Property Counsel

What you need to know about patentability searches and opinions

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A patentability search and opinion is an optional step in the patent process that can help you decide whether to commit to the time and expense of filing a patent application.

A patentability search is a search through databases of published documents to see if someone else has already described your invention or something similar to it. The information found in the search is relevant to two of the legal requirements for patentability: novelty and non-obviousness.

A patentability opinion is a legal opinion on the patentability of your invention based on information found in the search. The opinion may help you figure out what you can patent—or help you decide not to file a patent application at all.

Do I have to get a patentability search and opinion before I file a patent application?

Having a patentability search and opinion done is useful. Still, it’s optional, and it doesn’t have to be the first step.

It might be in your best interest to file a patent application first and consider a patentability search and opinion later. This is especially the case if you are about to launch your product or approach potential partners or investors. It’s best to file a patent application before disclosing your invention to others. A popular strategy is to file a United States provisional application, then conduct a patentability search and opinion afterward.

Can I skip the patentability search and opinion?

The patentability search and opinion is a tool to help you manage your business risk. It’s not mandatory. You can choose to file a patent application without getting a patentability search and opinion. However, getting the patentability search and opinion early on may save you time and money down the road.

When the patent office examines your patent application, a patent examiner will conduct a patentability search and may raise objections to your application. You can use the information from the examination to determine if there is anything patentable in your invention. If you want to proceed, you can then respond to the examiner with arguments and possibly amendments to your application (as long as you are not adding new content). The examiner will reconsider your application. This process can repeat once or many times before examination concludes.

With a patentability search and opinion, you could have written your patent application in a way that might have avoided some of those objections, making the examination process easier. If the final outcome is that your invention was not patentable at all, maybe you would have avoided spending that much time and money on examination by getting that patentability search and opinion in the first place.

That being said, you might not have any regrets: sometimes there is value in being able to tell inventors and customers that you have a “patent pending”.

On the other hand, if you’re not willing to commercialize your invention without knowing that you can patent something about your invention, get a patentability search and opinion. This is because your patent application will be published 18 months after your earliest effective filing date (with only certain exceptions), whether you get a patent or not.

Remember, the patentability search and opinion doesn’t have to be the first step. You can file a patent application and then get the search and opinion.

What’s involved in getting a patentability search and opinion?

When you work with us, we will first discuss your invention with you. Together, we will identify possible points of novelty over the state of the art as you understand it. This helps define the scope of the search. Then, we will agree on a budget and how the search will be conducted.

Once the search results are received, we will review the search results to determine whether your patent may be patentable and discuss our findings with you. After our discussion, you may decide to proceed with filing a patent application.

Which databases are searched in a patentability search?

When it comes to the patentability requirements of novelty and non-obviousness, relevant information can be in any language and from any country. It does not matter if you only intend to obtain a patent in Canada or the United States. Any kind of document or information may be relevant, including patent or patent applications, academic or trade journal articles, product descriptions, blog posts. Actual products and processes on the market or in use in business are relevant, too. We call these previously published documents and existing products or processes “prior art.”

However, a patentability search is often limited to patent databases and specific countries or languages due to budgetary constraints. The cost of a patentability search and opinion increases with the number of databases and languages searched. But even a low-budget search and opinion can be useful.

How long does it take to get a patentability search and opinion?

A simple search and opinion usually takes about 2-3 weeks. If results are needed sooner, rush charges may apply.

How reliable is a patentability search and opinion?

No patentability search is perfect. By law, patent applications are only published 18 months after their earliest effective filing date. This means that a patentability search will always have an 18-month “blind spot”: if you conduct a patentability search today, you could not know for sure that someone else didn’t already file a patent application for the same invention. That is a business risk that every inventor faces.

The scope of the patentability search, and its reliability, are also constrained by your budget.

You should also understand that a patentability search and opinion are not a guarantee that you won’t be infringing someone else’s intellectual property rights if you commercialize your invention. That kind of search and opinion is called a “clearance” or “freedom to operate” search and opinion and is more expensive than a patentability search.

Will a patentability search and opinion tell me if I am free to make and sell my invention?

No, it won’t. Making, selling, or using your own invention may infringe on someone else’s rights, even if your own invention is patentable.

If you need to evaluate the risk of infringing someone else’s rights, you need a “freedom to operate” or “clearance” search and opinion. This would need to be carried out in each country where you are planning to commercialize your invention.

How much does a patentability search and opinion cost?

The budget for a patentability search and opinion determines the time spent by the searcher and the number of databases (and languages) reviewed. The time required to review and digest the search results depends on the volume of documents found by the search. If there are multiple points of potential novelty of an invention, searching additional points of novelty increases the cost. Typically, a basic patentability search and oral opinion for a simple mechanical invention with a single point of novelty will start at about $2000.