PATENT DUE DILIGENCE AND SEARCH

What Is A Patent Search?

A patent search, or patentability search, confirms whether an invention is new by searching existing patents and other publicly available documents to locate similar inventions.  A patent search should be performed at the very beginning of the patent process to determine the state of the "prior art."  And, if the same or similar patent does not exist in the prior art, then you may be able to get a patent; however, a patent search cannot guarantee a patent will be issued once filed or that all "prior art" can be discovered during a patent search. 

While there is no legal requirement for a patent applicant or patent counsel to conduct a patentability search, the time invested in a patent search can help inform an inventor of what exists in the prior art. A patentability search can also be performed simply as due diligence when a company intends to go to market with a new product. A patent due diligence search can discover the following:

• Market Information: Information that allows a business to make an informed decision as to whether to go to market with an invention or proceed with applying for a patent; 

• Relevant Prior Art: Identifying relevant prior art so that a patent attorney can anticipate a patent examiner's potential rejections; and

• Present State of the Art: Discovering the general state of the art for the invention or patent.

The primary purpose of a patent due diligence review is to find prior art that may be relevant to the patentability of an invention.  For a claimed invention to be patentable, the invention must be:

• Useful Invention: Directed to the statutory subject matter and be useful or have a purpose or utility;

• New or Novel: Original, new or novel when compared to the prior art; and

• Non-obvious: Not obvious in light of the prior art.

Our patent lawyers represent clients in patent searches and patent due diligence reviews throughout the United States.

What Is Patent Due Diligence?