Patentability Search
Once you have prepared an invention disclosure of your idea and before submitting the idea to a
manufacturer, it is a very good idea to ask your patent attorney to conduct or obtain a patentability search
and to give you his preliminary opinion as to the patentability of your invention. This is very important,
since if your idea has already been disclosed in a published article or an issued patent or if it would have
been obvious to one skilled in the art from the teachings of one or more such publications, it will be
impossible to obtain a valid patent on your invention. If this is so, you may have nothing to sell, and it
may not be worthwhile for you to proceed further.
4.04 Patentability Search
Patentability searches also have two other important values. First, if your patent attorney knows the
most relevant previous technology (“prior art”) when he prepares your application, he will be able to
write a better, more persuasive application. Second, a patentability search may turn up an unexpired
patent, which would be infringed by the manufacture, use, or sale of a device or product embodying your
idea. This means that, even if you could still obtain a patent yourself, someone else has a dominating
patent, and your invention could not be marketed until that patent expires, unless a license could be
obtained from the owner of that patent.
Patentability searches are typically not exhaustive, and it is not uncommon for the patent examiner to
cite a better reference than was cited in the novelty search. However, they do weed out a lot of obviously
unpatentable inventions.
Typically, your patent attorney will require a retainer before agreeing to conduct or obtain a
patentability search. After completing the search, the attorney will carefully review the patents located in
the search and provide you with an opinion on patentability. That is, he will tell you whether or not he
believes meaningful patent protection can be obtained on the invention.
It is better to know that your invention is unpatentable as the result of a
relatively inexpensive patentability search than to find that out only after you have gone to the far greater
expense of filing a patent application!
Once it is determined that some meaningful patent protection may be obtainable on the invention, you
can either submit the idea to manufacturers to see if they are interested, noting of course the risks set forth
in Section 4.02, or proceed with the preparation and filing of a patent application on the idea.
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