Patentability search
Also called novelty search, prior art search, pre-filing search, patentability assessment
Patentability search is a search for prior art relevant to a defined invention, done while preparing and before filing a patent application, to evaluate whether the invention is new and non-obvious1.
It is narrower than a state of the art search, which surveys a whole technical field1. The USPTO advises applicants to search public records for similar inventions before applying for a patent2.
What the results are used for
WIPO's patent information module describes a patentability search as one that helps the applicant decide among three courses1:
- file a patent application1;
- proceed with the application as drafted1; or
- do further research and development to improve the invention and obtain a stronger patent1.
The results are also useful for drafting stronger or better claims, and may reveal potential conflicts with patents owned by others1. Checking those conflicts properly is the job of a freedom to operate search, which looks at unexpired patents and their claims1.
How a preliminary search works
The USPTO publishes a multi-step strategy for preliminary searches of US patents and published applications3:
- Brainstorm termsList terms that describe the invention3.
- Run a keyword searchSearch with those terms in Patent Public Search3.
- Review the documents foundConduct an in-depth review of the documents the search returns3.
- Expand with classificationFind relevant CPC classifications and search them, using the .CPC. field code in Patent Public Search's Advanced Search3. See Patent classification.
- Review cited referencesCheck the references cited on the front page of relevant patents, and the later patents that cite them3. See Patent citation.
- Broaden the searchExtend the search to foreign patents and non-patent literature, and consider a patent professional's search or review3.
Your search and the patent office's search
A patentability search is done by or for the applicant before filing1. Patent offices run their own search after filing4,5. Under the PCT, each international application is the subject of an international search, whose objective is to discover relevant prior art4. At the EPO, the aim of the search is to identify the state of the art relevant for assessing novelty and inventive step5.
EPO search reports mark the most relevant documents by category. Category X means a document on its own shows that a claim is not new or lacks inventive step; category Y means a document suggests a lack of inventive step when combined with one or more other documents of the same category, where the combination is obvious to a person skilled in the art6.
Search results and filing rules by jurisdiction
United States
- Each individual associated with filing and prosecuting an application must disclose to the USPTO all information known to that individual to be material to patentability (37 CFR 1.56)7.
- Filing an information disclosure statement is not to be construed as a representation that a search has been made (37 CFR 1.97(g))8.
Europe
- An applicant claiming priority must file a copy of the results of any search carried out by the office where the earlier application was filed; the copy is deemed duly filed if it is available to the EPO under conditions set by its President (Rule 141(1) and (2) EPC)9.
- The EPO may invite the applicant to provide, within two months, information on prior art taken into consideration in national or regional patent proceedings (Rule 141(3) and Article 124(1) EPC)9.
China
- An applicant for an invention patent who requests substantive examination must submit reference materials relating to the invention that existed before the filing date (Patent Law, Article 36)10.
- If the applicant has filed for the same invention abroad, the patent office may ask for the search or examination results from that filing (Article 36)10.
Patentability vs other patent searches
| Search | Question it answers | When it is done |
|---|---|---|
| Patentability | Is the invention new and non-obvious?1 | While preparing and before filing an application1 |
| State of the art | What exists in a technical field?1 | At the start of new R&D projects1 |
| Freedom to operate | Would launching a product infringe unexpired patents?1 | During development and before marketing1 |
| Validity | Was a granted patent properly granted?1 | After grant1 |
Questions people ask
Search before filing
Novelty Search AI Agent
An AI agent that searches prior art for your invention and compares each reference with it feature by feature.
Run Novelty SearchIs a patentability search required before filing?
Not in the US. Filing an information disclosure statement is not treated as a representation that a search was made8, and the duty of disclosure covers information already known to the individual7. The USPTO still advises searching public records for similar inventions before applying2.
How is a patentability search different from an FTO search?
A patentability search asks whether your invention is new and non-obvious, before you file. A freedom to operate search asks whether a product would infringe unexpired patents held by others1.
Should a patentability search cover more than patents?
Yes. The USPTO's strategy ends by broadening the search to foreign patents and non-patent literature, and suggests also searching books, journals, websites, technical catalogs and conference proceedings in the field3.
What if the search finds close prior art?
WIPO's module says the results help the applicant decide whether to file, whether to proceed with the application as drafted, or whether to do further research and development to strengthen the invention1. The results can also help in drafting stronger claims1.
How it connects
Go from the term to the task
Read how the method works, run it on your own product or idea, then try a free tool.
- 01 / How-toPatentability search: a practical guideCheck whether an invention is new before you spend on a filing.Read
- 02 / AI agentNovelty Search AI AgentAn AI agent that searches prior art for your invention and compares each reference with it feature by feature.Run it
- 03 / Free toolAI prior art searchDescribe an idea, get the closest patents.Try tool