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Patenting Step 1: Search

The first step in seeking patent protection is to find out if the invention is patentable. The first step to patenting has two connected parts. A prior art search, and a patentability evaluation.

Patenting an invention starts with a Prior Art Search and Patentability Evaluation.  

The first step in seeking patent protection is to find out if the invention is patentable. The first step to patenting has two connected parts.The first part is a prior art search. The prior art determines an inventions patentability in the second part, which is a patentability evaluation. 

A prior art search is the research to find prior art for an invention. It is a search for all the products and things that are similar to an invention that you want to patent. The prior art search determines if the invention exists in any patent, patent application, or non-patent literature around the world. An invention is not patentable over the prior art if any combination of prior art describes or shows how to make and use the invention.

The search includes looking for obvious precursors. Further, searching includes looking in other product/inventive areas that may be applicable to the subject matter of the invention. In addition, products/inventions from other areas may be applicable to an invention even if not for the same purpose or use.

Using the prior art from the search, the second part determines whether or not the invention’s claim(s) are patentable. The second part is the patentability evaluation.

What is a Patentability Evaluation?

A patentability evaluation is a patentability study of an invention’s claims based on the prior art. The patentability evaluation determines whether or not an idea or invention is new and patentable. The prior art documents from the search are studied in evaluating the idea or invention claimed.

An opinion of novelty and non-obviousness is made based on the prior art. The opinion includes an explanation of the reasoning and rationale for the patentability or non-patentability determination. The patentability determination may be based on a single prior art reference or any combination of references.

What does “Patentable” mean?

In order to be patentable, an invention must be four things. Firstly, patent eligible subject matter. Secondly, novel. Thirdly, useful. Lastly, non-obvious. First, patent eligible subject matter is a process, machine, manufacture, or composition of matter. Thus, an invention must be a process, machine, manufacture, or composition of matter. However, laws of nature, physical phenomena, and abstract ideas essentially belong to everyone and are not patentable.

If an invention is patent eligible, to be patentable, it must also be novel, useful, and non-obvious. The second criteria, is novelty. Prior art determines novelty. Novel means it must be new. An invention may be new if we cannot find it in the prior art.

The third criteria for an invention to be patentable is utility. An invention has utility if it is useful. An invention is useful if it can be used for a non-criminal purpose that is something more than mere trash. Generally, any suitable use is sufficient for patentability.

The fourth, and last, criteria for an invention to be patentable is non-obviousness. An invention is non-obvious when it, or an obvious precursor, is not present in the prior art.

We recommend a professional prior art search to determine what is prior art. Read more about patent eligibility at the USPTO.

What does “Novel” mean?

In order for an invention to be patentable it must be new. Novelty, as defined in the patent law, provides that an invention cannot be patented if: 

  • “(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention,” or 
  • “(2) the claimed invention was described in a patent issued or in an application for patent published or deemed published, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.” 

In other words, if we find it in prior art, the invention is not patentable. On the other hand, if we don’t find it in prior art, an invention may be patentable. An invention found in the prior art is obvious, and not patentable.

What does “Non-obvious” mean?

In order for an invention to be patentable, it must be non-obvious. An invention is obvious if it would be “obvious to one skilled in the art” of making such items to combine prior art (existing things) to get your device. An invention is obvious if there are any number of prior art references that, when combined, would result in essentially your invention. 

Prior art disclosure makes an invention obvious. However, no prior art disclosure only may make an invention non-obvious. For instance, when no prior art alone discloses an invention, a combination of prior art may still make the invention obvious to a person with skill in the art.

What does “Prior Art” mean?

Prior art is all information available to the public in any form before the date of invention that might be relevant to claims of novelty and non-obviousness. In other words, prior art is any disclosure relevant to claims of originality. Thus, any similar disclosure of a patent claim prevents patentability. The prior art is any patent, patent application, or non-patent literature that discloses an idea or invention. Disclosing means describes, or shows, how to make and use it.

Prior art can come from anywhere around the world. In addition, prior art from any areas or arts may be relevant to the claims of an invention even if for a different purpose or use.

What does “Art” mean?

The art an invention belongs to is the technical area to which the invention pertains, or with which it is most nearly connected. What the invention is determines the art. The technical area(s) an invention is classified into for examination and indexing are frequently similar sounding. For instance, if an invention’s classification included words like toys and games, the art is “making toys and games.” 

The “Art” matters because the description from a patent application must enable a person, having ordinary skill in the art, to make and use the invention. For instance, if the invention were a new toy, a person having ordinary skill in the art of making toys and games would need to be able to make and use the invention from the description submitted with the patent application.

An invention’s patentability is important, it would not be worth it to spend the time or money to write an application if the invention is not patentable. We only move on to the second step, patent application writing, if the invention is determined to be patentable.

Utility Invention Next: Step 2: Writing | Design Invention Next: Design App Writing | Patenting Costs

At Carson Patents we provide a patentability evaluation with our prior art search patenting service. In addition, for product manufacturing, we offer clearance and freedom to operate studies. Contact us to start the steps to patenting for your design and/or utility patent invention. Read about patenting costs.