The fact sheet covers what people can expect from a patentability search as it is not a precise science due to the complexities and non-uniformity of the patents system. It refers to patent agents but these searches can be carried by individuals using the web or by visiting or contacting a UK Patent Library. These libraries are spread across the UK and in most cases offer free help to carry out patent searches, provide access to older hardcopy materials, offer expertise and are part of the Patent Office network.

The purpose of a patentability search is to better assess the likelihood of securing patent protection for an invention. In other words, it is a cheap risk mitigation procedure against surprises from patent examiners and if the results appear to be sufficiently favourable, then the results of a search can be of assistance in defining the content of one's own patent application.

A patentability search is NOT an infringement search. In other words, the purpose is not to determine whether the manufacture, use or sale of what is thought to be an invention might infringe one or more existing patents. It is possible to have an invention which is patentable but which also infringes one or more other patents.

Scope of a Routine Patentability Search

The scope of a routine patentability search is essentially restricted to the patent "prior art" patent data accessible through electronic databases.

"Prior art" means in general the accumulated, published technical knowledge of all mankind.

A patentability search is usually restricted to selected classifications of earlier patents, selected from the UK, International Patent Classifications, or specific jurisdictions as requested. A search within selected classifications of UK patents will not necessarily include review of all patents in those classes, but will represent the best effort of researchers in screening patent data based on experience. For a higher level of security than provided by this system then real costs are incurred and professional help needed. You can of course do a basic search using free web sites rather than using any form of professional service.

The test of international novelty

As applied by patent examiners, it is important to understand that a patent or printed publication existing anywhere in the world, which describes or suggests an invention can, in theory, represent a barrier to a patent application or to the issuance of a valid patent. Likewise, it is important to understand that a patent application or a valid patent may be barred not only by prior patents or other publications but, in many countries, by prior public use or sale of an invention, or by prior disclosure of the invention by any means whatsoever. The rules here will vary from one country to the next. But, the important point is that a routine patentability search will not include any investigation for such things as prior public use or sale, prior disclosures other than within selected classes of patents as indicated above or other sorts of prior disclosures that might occur.

Accuracy of Patentability Searches

The accuracy of a routine patentability search is limited for several reasons:

In short, a patentability search has limited scope and limited accuracy.

Even if the results appear to be extremely favourable, there is no assurance or guarantee that a patent will be obtained if a patent application is filed or that any patent that is granted will necessarily be a valid patent.

Thus, there is always a risk that the cost of trying to secure patent protection will be lost despite any search that might be done. If a search is done, then the cost of the search itself would also be lost.

What Is the Point of the Search?

The cost of preparing, filing and prosecuting or attempting to prosecute a patent application is substantial and will be much greater than the cost of doing a routine search. Accordingly, despite the limitations, a routine search should normally be considered as a prudent investment.

While it will not eliminate the risk of failure, it will often serve to significantly reduce the risk. The results of a routine search will not infrequently suggest that no patent application should be filed because it becomes quite clear that the invention is not validly patentable. Or that any patent that might be obtained is likely to be very narrow in scope and easily avoided by competitors. In addition, the results of a patentability search can be of assistance in defining the content of one's own patent application. This will sometimes reduce the time and cost required preparing a patent application.

A manual search may be advisable if the subject matter of the technology is older and substantial prior art may exist further back in time than the scope of electronic databases.

For instance, a search of ploughs and other mechanical earth tilling devices would discover much prior art that was over 30 years old. You should budget for a preliminary review of the invention and a manual patentability search conducted through a registered patent agent. Patentability searches are usually done on a fixed budget. The usual approach is to establish a search budget and, recognising the limitations outlined above, to then conduct a search within the confines of that budget.

Remember basic searches may be available via your regional library service or at their lowest level from free web sites.

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