Reasons to Perform a Patentability Search
A high quality patentability search serves two main purposes. First, the search results are the basis for rendering a meaningful patentability opinion that considers the relevant documents that are discovered. (A patentability opinion is a professional opinion regarding the likelihood of obtaining patent protection, for a given invention, in view of the discovered documents; the patentability opinion should include the possible scope of patent claims that could potentially be obtained.) Armed with this information, the inventor/assignee is in a better position to make an informed decision regarding the feasibility of proceeding with preparing, filing, and prosecuting a patent application for the invention.
Second, a high quality patentability search aids a patent practitioner in preparing a patent application by enabling identification of the truly novel features of the claimed invention (in light of the subject matter disclosed in the discovered documents).
Notwithstanding its usefulness, a patentability search is not without its limitations. For example, a patentability search is not necessarily designed to detect undocumented sales activity that is potentially relevant to patentability of an invention. Additionally, cost considerations may dictate that a limited amount of time can be spent on a patentability search and the selective analysis of the relevant discovered documents. It is important, therefore, to appreciate the distinct benefits and limitations of any given type of search.
Performing a robust but cost-effective patentability search is an art, and search results are only as reliable as the underlying search. Thus, enlisting the services of a highly skilled professional--who thoroughly understands the distinct purposes of the different types of searches--to perform the actual search, is vital to assuring the reliability of the search results.
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