How Do Inventors Go To Market? (Part 3) The Patentability Search And Opinion Helps You Decide

When you've got a great idea and you're anxious to get it to market, you need to determine whether it's best to go for patent protection or not. The patentability search and opinion, done by the right patent attorney, will give you the best indication of whether or not your patent will be awarded.

Of course, with a provisional patent application you can get some protection while you stall for divine intervention, but most likely that ain't comin', so if your market research and preliminary patentability search have yielded positive results, you should seriously consider getting a patentability search and opinion done by your patent attorney.

You remember your patent attorney? He's the one that you found by conducting your due diligence. (see Find The Right Patent Attorney for You ) Due diligence, though quite time consuming, gave you the confidence you need to rely on your patent attorney's thorough research and expert opinion to steer the course of your invention.

What To Expect From A Good Patentability Search and Opinion

First, the patentability search is more extensive than the preliminary patent search you did early on in your process. While you searched the USPTO on-line data base, post 1976, for patents and patents pending related to your invention, the patentability search will look as far back in time as it needs to uncover possible disclosures related to your invention, and it will cover not only the Patent Office files, but foreign patent data bases, as well as U.S. and foreign technical journals and lay publications where related products might be disclosed.

In the patentability opinion, your patent attorney, after analyzing all of the prior art reasonably available (No patentability search covers all possible sources of disclosure in the world!), makes an educated assessment of how the Patent Office will view your non provisional patent application, answering these questions: 1) Is it already patented? 2) Is it already in use? 3) Is it useful? 4) Is it obvious? (The Patent Office specifies that the invention should not be "obvious" to a person skilled in the field of the invention. See Novelty and Non-Obviousness, Conditions for Obtaining a Patent ).

In assessing whether or not your invention meets the above criteria, your patent attorney analyses your market research and preliminary patent search results as well as his own,search results, so all of the information you both collected finally comes together in one place! (That dreadful preliminary patent search is worth something after all!)

The patentability opinion should be a careful explanation of the criteria your invention meets or does not meet in order for it to be patentable. These findings should be supported by references to specific patents that your attorney is using for justification of his argument. Copies of those patents (or other disclosures) should be included in the physical report.

An important result of the attorney's analysis will be to define the scope of your invention, as his search will find what specific elements of your invention are patentable. The scope may be broadened or narrowed by the attorney's findings; broadened, if there are more aspects of the invention that can be patented and narrowed, if there are fewer.

For example, let's say your invention is a scrubbing device and you set out to use a new material, a new method of production, and a new device for distributing the liquid soap through the device. If patentable, the three elements would become three major claims of your invention. If your patent attorney finds, through his research, that you can also claim the scrubber fastening system as new and not obvious, that element would broaden your scope from three to four major claims of your invention. (In fact, the fastening system could become the subject of an entirely independent patent!) But, if your attorney finds that the device for distributing the soap is made obvious from prior patents in the field, you would have to narrow the scope from three claims to two.

It seems to be a generally accepted theory that the broader the claims of an invention the better, from a commercial standpoint, as the more facets of the invention you claim, the more difficult it becomes for competitors to create similar products without violating the patent. On the other hand, some patents contain only one or two claims that may be equally difficult to circumvent, so the broad/narrow issue really depends on the invention.

Mar 6, 2007
by Myra Per-Lee

Experiences With Patentability Opinions

Readers... Please share your own experiences with getting patentability opinions written.  What kind of impact did a patentability opinion have on your eventual decision to patent or not to patent?  Did you find the opinion paper to be a critical step to take?

We'd love to hear from you!

Myra Per-Lee Featured