A patentability search (also known as a prior art search) is an important first step before investing in intellectual property. When done properly, the search helps determine the patentability of an idea and the scope of the innovation. The search will also help to focus drafting of a patent and a search by a qualified professional and will help convince investors of the value of your patent.

Proper searching and interpretation of search results requires effort and understanding of intellectual property law. For this reason, it pays to use a qualified patent professional (a patent attorney or agent). If you are hiring a law firm to do the search, find out who actually does the searching. You may be paying a law firm a premium price to have a lay-searcher do the work. Individual attorneys or agents may do better and less expensive searches than a large firm. If you use lay-searchers, have them sign a non-disclosure agreement before you give them any material describing your invention. Before using a lawyer, get a detailed description of the work he is agreeing to do and a cost estimate.

Two heads are better than (and sometimes cheaper than) one. An important trick to making a good search is cooperating with your attorney. Before asking a lawyer to perform a prior art search, you should do some preliminary work yourself. Firstly, a conclusive patent search must be based on a well-defined idea. You need to give the searcher a clear, concise description of your invention. You should also supply your searcher with a list (preferably in writing) of close competitors and closely competing products and some idea of the significant difference between your idea and their products. Also supply the searcher with a glossary of specialized terms that you feel might be applicable to your invention (and definitions for terms which differ from their Standard English meaning). It is imperative that you listen to your attorney. Get your attorney to describe what she considers the substance of the invention and look over the preliminary search results. Do the results appear to be relevant to your patenting objectives? If not, clarify why. Did the attorney see some significance that was not apparent to you? Did he misunderstand the invention? Is he focused on marketable aspects of the invention? Did he misunderstand the prior art? Are the technologies compatible?

A detailed search generally needs to be an interactive process. If the preliminary search results are not on target, help your attorney focus her search to more relevant prior art and to more essential aspects of the invention. In the end you should clarify not only whether the idea is patentable, but exactly which aspects of the idea are patentable.

There is a second kind of search, a freedom to operate search. A freedom to operate search determines whether you may freely practice your invention without infringing on another patent. A freedom to operate search applies only to a very specific invention. If your invention isn’t yet clearly defined and in final form, a freedom to operate search is probably a waste of time and money.

By Lela

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