How Do You Protect Your Product? The First Step is a Patentability Search

How Do You Protect Your Product? The First Step is a Patentability Search

January 12, 2006

Company A has incorporated a new invention into one of its products and the product is flying off the shelves. The Company's president recognizes the value of excluding competitors from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. So the president calls the Company's patent attorney to discuss getting a patent. During the phone conversation the patent attorney says, ?The first step is a patentability search.?

This scenario occurs on a daily basis. Generally, it is advisable to perform a patentability search for a new invention, or an improvement to an existing product. This is because, under the law in the United States, in order to obtain a patent it is necessary  that the invention be novel, not obvious, and have utility. Typically, assessing whether the invention has sufficient utility is straightforward. However, in order to assess whether novelty and non-obviousness exist, a search should be conducted to identify prior art and compare it to the invention.

In order to have the most complete search results, the patent attorney and the inventors must work together. The inventors must be involved as they are leaders in the industry and familiar with the state of the art in the industry. Since the patent attorney is familiar with the ?usual sources? searched by the patent examiners during their post-filing search while attempting to find references to reject the claims of a patent application, the patent attorney will search those documents.

Typically, the patent attorney will search U.S. Patent Office documents, including issued patents, and published patent applications. Some pending U.S. patent applications will not yet be published. If such a non-published patent application issues as a patent, then it could affect the patentability of the invention. By searching the U.S. Patent Office documents, the patent attorney is searching one of the same pools of information which will be searched by the patent examiner when a patent application is filed. Other sources of prior art also exist.

The involvement of the inventors is advantageous in order to identify those other sources of prior art. Since a law firm cannot maintain current periodicals in each industry (i.e. mechanical arts, electrical arts, chemical arts, biotechnology, etc.), the inventors are relied upon in part.  Inventors who have access to current literature may easily uncover advertisements, published articles, reports, and other information in their specific industry which may be relevant to the invention. In many cases, the inventors, or others at the company, have already performed such a search.

All information provided to the patent attorney during the search will help. For example, if the patent attorney is made aware of a certain reference, then efforts may be made to add helpful information to a future patent application in order to assist the patent examiner in understanding how the invention differs from, and is superior to, the similar technology disclosed therein.

Conducting a patentability search generates discussion of claim strategy and future development of the invention. Once all searching has concluded, the patent attorney analyzes the results to determine whether the invention is novel and not obvious. Typically, the patent attorney and client discuss the search results and conclusions. If obviousness is an issue, a part of that discussion regards what, if any, arguments exist to point out the non-obviousness of the combination of the elements of the invention. Obviousness, under the law, is a question of whether the differences between the invention and the prior art would have been obvious to a person of ordinary skill in the art. In certain situations, obviousness might be overcome if any of the following secondary factors apply: The invention has significant commercial success, the invention satisfied a long felt but unsolved need; the invention solves a problem having a long history of unsuccessful attempts to be solved; or the disclosed invention produced an unexpected result. The client is properly equipped to make the necessary business decisions after such discussion of the search results.

Regarding the current hypothetical, if the patent attorney's atentability search indicates the invention is novel, not obvious, and has utility, then Company A may enthusiastically proceed with a patent application.  Otherwise, Company A may choose to redirect its research and development of the invention based upon the search results. Company A may even elect not to file a patent application and instead concentrate its energy on inventing a novel invention that will be patentable and a best-seller!