Legal Definitions - search of patentability

A search of patentability, also known as a patentability search, is a thorough investigation conducted to determine if an invention meets the legal requirements to be granted a patent. This process involves searching various databases, including existing patents, scientific literature, and public disclosures, for "prior art"—any evidence that an invention or a similar concept already exists or has been publicly disclosed. The primary goal is to assess whether the invention is truly new (novel) and not obvious to someone skilled in the relevant field, which are fundamental criteria for patent eligibility. Conducting such a search helps inventors and companies make informed decisions about pursuing a patent application and can strengthen the application by identifying relevant prior art early on.

• Example 1: New Medical Device

  A small startup company develops an innovative surgical instrument designed to make a common procedure less invasive. Before investing substantial funds into manufacturing and a formal patent application, the company's legal team commissions a patentability search. The search involves examining databases of medical device patents, surgical tool designs, and scientific publications related to minimally invasive surgery from around the world.

  This example illustrates a patentability search because the company is proactively investigating whether their "innovative" instrument is genuinely novel and non-obvious compared to existing medical technology. The search helps them determine if their invention has a strong chance of receiving patent protection before committing significant resources.

• Example 2: Sustainable Packaging Material

  An independent inventor creates a new biodegradable material for food packaging that is derived from an unusual agricultural byproduct. Excited by its potential, the inventor wants to secure intellectual property rights. Their first step is to engage a patent agent to perform a patentability search.

  Here, the patentability search would involve scouring patents for biodegradable materials, food packaging innovations, and research papers on agricultural waste utilization. The purpose is to ascertain if a similar material or application already exists or has been described, thereby assessing the novelty and non-obviousness of the inventor's creation before they proceed with a costly patent application.

• Example 3: Advanced AI Software Feature

  A large technology company develops a novel artificial intelligence algorithm that significantly improves the accuracy of predictive analytics in financial markets. Before publicly announcing the feature or filing a patent, the company's R&D department requests a comprehensive patentability search.

  This scenario demonstrates a patentability search as the company is seeking to confirm that their AI algorithm is unique and not an obvious extension of existing AI technologies. The search would involve reviewing patents on AI, machine learning algorithms, financial modeling software, and academic publications to identify any prior art that could challenge the novelty or non-obviousness of their invention, guiding their patent strategy.