Inventions are arguably one of the most valuable intangible assets for any business. The best way to protect these inventions is by patenting them.
A patent renders the owner the exclusive right to use the invention. Thus, a patent is not only a source of revenue for a business but also adds to the credibility of the business. The more patents a company owns, the more credible and legit the company seems, especially to potential investors. Getting a patent could be a long-wound, time-consuming process.
As such, it is always better to conduct a prior art search and patentability search for your invention or field of invention. Though often used interchangeably, patentability and prior art search are NOT the same. Let’s take a look at the two to understand the differences.
Prior Art Search
As the name describes, a prior art search is conducted to see if there are any relevant prior art exists. It is essential to understand that the prior art search is performed before you develop your invention. It is conducted to understand all the existing prior art in your field of interest.
Purpose:
For instance, let’s say you want to invent a new kind of thermos; before putting in all the money and effort required for the research and development of the thermos, a smart thing to do would be to conduct a prior art search to see if the kind of thermos you want to invent already exists. Another thing is that a prior art search can also give you a strategy for your invention. If you zero in on a specific field of interest and conduct a patent prior art search, it will give you an idea of what is lacking in that field and thus push you toward a new invention.
Method:
Researchers usually rely on scientific publications and the Internet to understand the technological advancement in their field. This research is insufficient. A foolproof way of conducting a prior art search is by looking at patents and other prior art publications. Patents are easily accessible and thoroughly described with the illustration, enabling an ordinary person skilled in the area to reproduce the invention. Moreover, patents are up-to-date.
Conducting a prior art search involves a combination of concepts that describe your area of interest. Concepts can be retrieved by imagining ten different texts describing the same invention. You will find words expressing the same ideas in these ten texts. The search will then consist of finding inventions that combine these concepts.
When to conduct:
Thus, a prior art search aims to help you understand where your invention stands in novelty, i.e., whether any identical/ similar prior art already exists. Conducting a prior art search before and during the development of your invention is essential. This is because while you are developing your invention, many new inventions similar to your invention might come into place. Thus, a prior art search has to be at the initial phase and ongoing process while developing your invention.
A prior art search, however, does not give the green card insofar as the patentability of your invention is concerned. You must conduct a patentability search to determine whether your invention is patentable.
Patentability Search
Again, as the name suggests, a patentability search helps you determine whether your invention can be patented or not. This search is more comprehensive than the prior art search that will be conducted once you have developed your invention. While a prior art search only determines the existence of identical/ similar prior arts, the patentability search goes one step further. It determines whether your invention is patentable per the law, in other words, whether it meets the legal requirements for being patented.
Any patent law requires three things to patent an invention: Novelty, non-obviousness, and usefulness. While the prior art search deals with the relevant prior arts, the patentability search deals with the non-obvious requirement.
Method:
A patentability search will require a comprehensive comparison of all prior arts in the same field as your invention. To conduct a patentability search, you first have to determine the critical features of your invention. But unlike the prior art search, in the patentability search, you have to shortlist every prior invention that has even one of the critical features of your invention. Upon jointly comparing all the prior arts, you must determine whether your invention will be obvious to a person of ordinary skill in the relevant field.
Example:
For example, let’s say your invention has the essential features X and Z. One prior invention has the crucial feature X, and another prior invention has the critical feature Z. You will now have to determine whether, on looking at the two previous inventions together, your invention becomes obvious. Will a person of ordinary skill in your field of invention deduce your invention by looking at the prior arts? If yes, then your invention is obvious; hence, it cannot be patented. A patentability search, therefore, determines the likelihood of your invention obtaining a patent.
Difference:
The below table summarizes the difference between the prior art search and the patentability search:
| PRIOR ART SEARCH | PATENTABILITY SEARCH | |
| PURPOSE | To determine whether you can go ahead with your invention idea. A prior art search determines whether any identical/ similar prior arts already exist. And also understand whether there is any need for a new invention in a particular field. | To determine whether your invention is patentable as per the law. Whether your invention is novel or non-obvious to a person of ordinary skill in the relevant field. |
| WHEN TO CONDUCT | Before the research and development of an invention, a prior art search is conducted to determine whether you can go ahead with the invention. If a similar prior art already exists, then there is no point in developing the same thing. | A patentability search is conducted for the invention being developed to determine whether the invention is patentable as per the law. |
| METHOD | A prior art search involves searching for a combination of features that describe your area of interest. | Key features mapping and comparison. If you cannot deduce your invention by comparing the critical elements of existing inventions in the same field, then your invention is not obvious. Some key features in one prior art and other essential features of another will mean that your invention is obvious and thus not patentable. |
| CONCLUSION | A prior art search will help you decide whether to go ahead with the invention or not. But it is not enough to determine whether your invention, once developed, will be patentable or not. | A patentability search reveals the novelty as well as the non-obviousness of your invention. In short, it exposes your likelihood of your invention obtaining a patent, whether your invention can be patented as per the law. |
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Conclusion:
A prior art search may be conducted before you start the research and development for your invention. A patentability search may be performed before applying for a patent. Both help you save a lot of time and money as the former enables you to decide whether to develop the invention, and the latter tells you the patentability of your invention. A prior art search and patentability search give you a broader understanding of all the existing prior arts in your field, making it slightly more comfortable to draft your patent specification, keeping in mind all the current prior arts.
You can also read our wide array of patent search services and take decisions based on your requirements.
