The PTO places all patents into one or more classifications (they have hundreds
of classes and many thousands of subclasses) with other patents that are part of the
same related technology. A patentability search is directed to the classes and
subclasses that are believed to be the most relevant to the inventor's invention.
Typically, the search identifies prior art patents which disclose various inventions that
relate to the inventor's invention. These patents can be useful in determining whether
a patent application is likely to be issued and to assist the inventor in the development
of his or her invention and patent application.
There are certain limitations to any patentability search. For instance, there is
always the possibility that the PTO files are incomplete, resulting in certain patents
being unavailable at the time the search was performed. In addition, due to the costs
that would be involved, a patentability search is not directed to foreign patents or
non-patent literature, both of which are considered by the PTO, along with other
information available to the PTO, when analyzing the patentability of the invention. In
addition, there is no way to know if any pending patent applications, which are held in
strict secrecy by the PTO, pertain to an invention that is similar to the inventor's.
Computer searching of patent databases also has a number of limitations, including
records that may only go back 20 to 25 years and results that are driven by the
searcher's selection of key words.
As an alternative to or in addition to a formal patentability search, the inventor or
owner should perform his or her own search and review of related prior art materials,
including competing products. The search can be conducted by discussing the
invention with others who are familiar with the technology area and who may be
aware of related prior art. A search of the Internet for related technology may also
provide useful prior art or background information. This material should be reviewed
as part of the analysis of whether to pursue a patent on the possible invention. If a
decision is made to have a formal patent search performed, then these materials
should be given to the patent attorney for review (also for submission to the PTO if a
patent application is filed).
In utilizing the patentability search to evaluate the potential patentability of the
invention, the patent attorney conducts the analysis of the identified patents and the
prior art materials with reference to the patentability requirements set forth in the
United States laws governing the issuance of patents (see the Patentability
Requirements discussion). Generally, the patent attorney reviews the search results
and provides report summarizing his or her analysis.