Patentability Search with Professionals

A Patentability Search is strategized and conducted prior to filing a patent application. It is more thorough than pre-filing searches. It assesses whether an invention can be patented. A patentability search requires looking for literature, including patents and unpublished works, created outside a given country pertaining to the invention’s field of expertise to establish if it meets the criteria of novelty, non-obviousness, and industrial applicability.

Patent searches conducted for enforcement purposes, as well as for coexistence or competitive landscape analysis, are not proactive like patentability searches. It assists businesses in determining whether their invention is defensibly patentable, novel, and if there is potential for patent rights to be granted. The outcomes from such searches will impact the patent application strategy and further shape business decisions related to product development, licensing, marketing, and even strategy.

More than a mere technical formality, this search serves to mitigate risks while adding value in the early stages of an innovation’s life cycle.

The objective of conducting a patentability search revolves around identifying whether an invention is susceptible to potential patenting and assessing the likelihood of obtaining a patent in light of the available information. It assists in the determination of originality by first establishing prior art which includes previous patents, published works, or any public disclosures that exist.

This evaluation also supports sound legal and business choices. It enables inventors to strategically frame their claims in ways that are not aligned with known technologies, thus increasing the chances of acceptance. From an institutional or corporate standpoint, this means reduced objections, lower prosecution costs, and a clearer path to obtaining enforceable rights.

Moreover, uncovering gaps within the patent ecosystem might incentivise early revisions to the invention that sharpen its claims to distinctiveness or better align with less contested areas within the current patent landscape.

Applying for a patent without conducting prior research on patentability is akin to marketing a product without conducting market research. Such an approach creates the risk of wasting resources, effort, and potentially losing valuable rights. A patentability search underscores strategic decision, and action can be taken with insight and legal groundwork in place.

Well-executed searches strengthen the application by anticipating strategic moves that will:

• Minimise the need for adjustment and appeal to response objections, directly to objections raised during examination.
• Support an analysis of commercial or legal avenues applicable to a patent and its strategic advantages.
• Help create post-grant invalidation challenge-proof patent claims.
• Assist in devising a more effective multinational filing approach or developing a patent portfolio.

This can serve as a legally justifiable basis for innovation while aiding in IP licensing, investment due diligence, or enterprise-level corporate IP strategy, thus supporting a sound corporate reputation.

This search is essential for:

• Individuals wanting to monetise an invention with the intention of patenting it prior to public disclosure.
• New companies looking to enhance credibility among developed intellectual property (IP) assets with prospective investors.
• Businesses determining the bounding originality and registrability of invention disclosures generated from in-house R&D activities.
• Academics aim to protect new findings or innovations prior to publishing or transferring technologies.
• Clients are being advised on early patent strategy implementation by patent attorneys and IP consultants.

Essentially, to transform a scientific idea into a legal asset, one must conduct a patentability search, which is the most actionable first step.

The professional patentability search has legal benefits that are more strategic.

• Focused Submission Decisions: Determines whether an application should be submitted and assists in evaluating its optimal positioning. Also ensures the submission strategy is informed and docked at the right position.
• Protect against Costs: Protect resources by not spending on applications that are deemed dull or lack novelty.
• Claim Enhancements: Legal practitioners are assisted in crafting claims that maximally increase their enforceability while coping with known prior art.
• Proactive Technology Surveillance: Helps to access technologies that were filed or patented before, aiding research and subsequent innovative work.
• Proactive Management of IP Risks: Reduces the chances of patenting an invention, filing it, and facing patent disputes or claims to invalidate it later.

Often, these elements are what distinguish an application that is rejected or granted.

AnalystIP blends legal and technical processes for conducting patentability searches. We understand each invention brings with it its own uniqueness which requires a tailored approach for the search strategy to be effective. With our skilled patent lawyers and experts in various fields, we conduct tailored searches in all patent offices and some reputable non-patent databases.

Here is how we assist you:

• The invention undergoes a detailed analysis which allows us to capture the minute relevant technical details to inform the search design.
• There is no restriction in geography as we carry out an extensive search using sophisticated databases and classification systems.
• Legal experts cross-check the findings from the search with all relevant jurisdictional boundaries to assess its novelty and any inventive steps taken.
• Preparation of a clear and comprehensive report on prior art including possible outcomes based on filing strategy provides our clients with foresight for strategic patent positioning.
• Recommendation for taking any of the following actions is given: refining the invention, adjusting the claims scope, or preparing a draft application to be filed.

From domestic to international filing plans, we ensure providing sound legal footing for the entire IP journey.

• Barriers Such As Geography Do Not Exist: Our attorneys have trained at major institutions such as the USPTO, EPO, IPO, and WIPO, enabling them to practice across borders.
• Industry Expertise: We operate in the life sciences, software, electronics, chemicals, and mechanical systems industries.
• Targeted Business Intelligence: Legal counsel must drive a favourable business outcome; otherwise, it is ineffective. Strategic business decisions require sound legal counsel, and we offer guidance through informed insights.
• Private & Safe: Information is protected under strict confidentiality requirements.
• Efficient: Timely delivery of accurate assessments and actionable recommendations.

At AnalystIP, a patentability search is sophisticated and tailored to the invention ensuring optimal protective mechanisms are built in at every stage. Surpassing mere compliance with regulations, every protective step is strategically designed to ensure comprehensive safeguarding.