What Is a Patentability Search?

A patentability search is a type of patent search that gives you valuable information about whether your invention will qualify for a patent. The search allows you to compare your invention with prior art.

The patentability search is the most common of all the different types of patent searches. It is otherwise known as a novelty search or a prior art search. Its goal is to make sure that your invention hasn't already been created by someone else. The search lets you compare your invention with prior art.  This includes both preexisting patented and non-patented inventions.

Novelty searches and state-of-the-art searches are related. A state-of-the-art search provides an in-depth look at technology in a particular industry.

A patentability search is not the same thing as an infringement search, which is sometimes called a patent clearance search. An infringement search's goal is to find out if an invention infringes on other patents. It is possible to have a patentable invention that infringes on other patents.

Why Is a Patentability Search Important?

Here are some of the key benefits of this type of search:

  • Looking at prior art and previous patent applications will help you draft your own application. You'll get the broadest protection possible for your patent without infringing on preexisting patents.
  • When you compare your invention with prior art, you can predict some of the objections that the United States Patent and Trademark Office (USPTO) may raise against your application. You can prepare responses to these objections.
  • The information you collect during your search will help you if anyone ever questions the validity of your patent.
  • The search will give you information about what aspects of your invention are patentable. Even if some parts of it are too closely related to prior art, other parts may qualify for patent protection.
  • A patent search increases the likelihood that you will receive a patent.
  • The search can tell you how valuable a patent on your idea might be. If you can patent several parts of your invention or similar products have done well on the market, your patent is likely to have a high value.
  • If you are confident that your invention is patentable, you will be more likely to attract investors.
  • Since a prior art search doesn't only search for patent items, it can look at both old and new inventions. There are no date restrictions. The search covers patented and non-patented inventions, and it also looks in published industry literature.
  • Even though there is no way to be absolutely certain that no prior art exists that could put you in danger of not getting a patent, it is a cost-effective way to gain information that will affect your patent application process.

You should do a patentability search even if you think nothing like your invention exists. There may still be prior art that is close enough to your invention to prevent you from getting a patent. That prior art might not be on the market because the patent holder didn't have the means to sell it or attempts to sell the product failed.

How to Conduct a Patentability Search

There are millions of patents in existence. For your patentability search to reveal all the information you need, dig deep for details. To uncover the most relevant data, you should:

  • Take advantage of multiple search tools. Free Patents Online, the USPTO database, and Google are all valuable resources. Each has its own advantages. Free Patents Online offers PDF documents with convenient hyperlinks. Google is fast and has information that stretches back many years. The USPTO database is an official government source.
  • Use the tutorials, help sections, and advanced search features of each patent search engine. You'll learn techniques that will make your search more effective.
  • Use a wide variety of keywords during your search. Many patents use obscure or unobvious language, so brainstorm as many keywords as possible that relate to your invention. Use all of them during your search.
  • Become familiar with the patent classification systems. Europe and the U.S. share a system, while other countries have a different method for organizing patents. When you know what classes and subclasses your invention falls into, your search is effective. Professional patent examiners sometimes create their own categories within subclasses to organize the information they find.
  • To find prior art that is not in patent databases, you can check other resources such as Google Scholar or Sci Hub.

Frequently Asked Questions

  • Is it really necessary to conduct a patentability search?

The law doesn't require that inventors conduct a patentability search. The USPTO will conduct its own search after you file your application. However, doing your own search is wise. It will stop you from spending a lot of time and money on a patent application that ultimately gets rejected.

  • Should you hire an attorney to help with your search?

Patent searching is a tricky skill to master. Professional patent searchers know how to look for information. More importantly, they understand the information they find. Be sure to hire someone who will offer not just a search, but also an opinion on the patentability of your invention.

Ask about the price of the search before you commit to the service. A professional patent search can cost thousands of dollars.

Wait to hire a professional until after you conduct your own preliminary search. To find a reliable patent researcher, you can look at online reviews and check sources like the Better Business Bureau.

Give your patent researcher a detailed description of your invention, including diagrams, photographs, and drawings. These might be in the form of your personal notes or a rough draft of a patent application. You should also provide a corporate invention disclosure form.

  • How much does it cost to hire someone to help with a patentability search?

The cost of the search will usually be between $1,000 and $3,000; much depends on whom you hire and what type of technology the search will be looking at. You might also ask your attorney to help you file a provisional patent application, which will give limited protection to your invention while you're perfecting it. Attorney fees for this are often between $1,500 and $6,000; this also depends on the type of technology that's involved.

  • When is the best time to do a patentability search?

You should do your patentability search well before you submit your patent application. Consider doing the search even before you submit a provisional patent application. It will equip you with information that will make your application more likely to be approved.

A patentability search is especially valuable if you plan to submit an Accelerated Examination Petition to the USPTO. This is a request to speed up the process of considering your patent application.

You can even do a patentability search if you do not yet have an invention. The search will help you find a need for an invention and can spark your creative process.

  • Are there any confidentiality concerns attached to doing a patentability search?

Searching for patents on public databases is safe. It is highly unlikely that someone would be able to steal your invention based only on the keywords you use during your search. However, if you are concerned that the search will give others the ability to steal your idea, you may want to file a provisional patent application. This lasts for 12 months and allows you to label your invention as "patent pending."

  • Are there any offline resources for patent searching?

Yes. Patent libraries in every state contain hard copies of patents. The librarians at these places may be able to help you with your search. However, the patents at these libraries are arranged according to patent number. It is not an efficient way to search.

Conclusion

A patentability search is an important part of the patent application process and is well worth the effort. You can conduct a search yourself by making use of online tools. It is smart to hire professional help. When your search is complete, you can draft your patent application and hopefully look forward to all the benefits that come with protecting your invention.


If you need help with a patentability search, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.