Taking a Peek at Your Future Patent: Patentability Search and Opinion

I get a recurring question among new inventors – how do I know if I’ll get a patent after going through the time and expense of filing a patent application? This is a valid concern, because the United States Patent and Trademark Office (USPTO) will not issue a patent if the claimed invention is identically described in a publication or other public disclosure. Additionally, the claimed invention cannot be an obvious variant of something publicly disclosed that already exists.

To answer the question, it’s possible to get a feel for the scope of an invention that could be protected during a patentability search. The patentability search involves checking the records at the USPTO for published patent applications and issued patents. Most of the time, different features of an invention are published in several publications. In these instances, the broadest aspect of an invention may not be available, but narrower features that are previously undisclosed may be protectable.

As an hypothetical, consider the Dyson Airblade hand dryer. A patentability search at the time this was invented would have revealed hand dryers generally. However, the publications found may not have included the shaped nozzle that generates the airblade that quickly pulls water off of your hands. In this instance, the search would have revealed that a patent application should not claim all hand dryers, but should be more narrowly tailored to the specific structures of the airblade itself. This patent would still have value, because other hand dryer manufacturers could be excluded from using the airblade structures, even though they can continue making the older hand dryers.

Based on the published features found in the search and the scope of protection available, you can then decide whether to pursue patent protection. Your attorney can also use this information to craft claims specifically tailored to the protection available. This can result in fewer rejections from the USPTO before obtaining an issued patent.

However, there are a few drawbacks to a patentability opinion, but they are small compared to the benefits. A patentability search will not reveal unpublished patent applications. Generally, a patent application will not be published until 18 months after the filing date, unless early publication was requested or the patent issued before the publication date.

Additionally, there is an affirmative duty to submit publications that are “material to patentability” when filing a patent application. To be safe, I like to submit the publications that are reported in the patentability opinion when proceeding to file a patent application. This isn’t usually a problem during prosecution, because other features were not found in the references.

If you need help searching the USPTO databases for your invention or if you need an opinion on whether your invention is different, contact me.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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