USPTO Guidelines for a Patentability Search: A Complete Guide

This detailed guide explains USPTO guidelines, best practices, examples, and FAQs to help you perform a comprehensive patentability search.

What Is a Patentability Search?

A patentability search, also known as a novelty search, is the process of reviewing existing patents, published applications, and non-patent literature to assess if an invention qualifies for patent protection.

The USPTO uses this search to determine whether an invention meets three critical criteria:

• Novelty: The invention must be new.

• Non-Obviousness: It should not be an obvious improvement over existing inventions.

• Utility: It must have a specific and practical use.

Failing to conduct a proper search can lead to rejected applications or expensive legal disputes.

USPTO Guidelines for Conducting a Patentability Search

1. Use USPTO’s Official Search Tools

The USPTO provides its Patent Public Search (PPUBS) tool, which gives access to millions of patents and published applications. The database includes U.S. and international references, making it the primary resource for accurate and up-to-date searches.

Additionally, the USPTO suggests using:

• PAIR (Patent Application Information Retrieval): To track application status.

• Global Dossier: For viewing patent applications in multiple jurisdictions.

• WIPO PATENTSCOPE: To explore worldwide patent publications.

Example: A medical device company used USPTO’s Patent Public Search tool and discovered two similar patents filed in Europe. This allowed them to modify their design and avoid potential rejections.

2. Use Accurate Keywords and Classifications

The USPTO recommends using the Cooperative Patent Classification (CPC) system for precise searching. CPC codes help narrow results to the relevant technology area.

Best Practice: Combine CPC classifications with specific keywords. For instance, if you are developing a “wireless charging device,” use both the CPC classification for wireless power transfer and keywords like “inductive charging” or “contactless power system.”

3. Review Both U.S. and International References

Patentability is not limited to U.S.-filed patents. The USPTO considers any prior art from around the world. Inventors should search:

• European Patent Office (EPO) database

• Japan Platform for Patent Information (J-PlatPat)

• WIPO PATENTSCOPE

Case Study: A startup developing eco-friendly packaging performed only a U.S. patent search. During examination, the USPTO cited a similar patent filed in Germany. The application was rejected. A global search could have prevented this mistake early.

4. Analyze Patent Claims and Specifications

The USPTO emphasizes examining both the claims and the specifications of patents.

• Claims define the legal boundaries of an invention.

• Specifications provide detailed descriptions and drawings.

By studying both, inventors can determine whether their idea overlaps with existing patents or if there is room for improvement.

Example: A software developer found a patent that seemed similar. However, the claims only covered a specific method. By reviewing the specifications, the developer discovered an opportunity to patent an alternative approach.

5. Include Non-Patent Literature

The USPTO encourages reviewing non-patent literature, including:

• Academic research papers

• Industry publications

• Product manuals

• Technical standards

Many inventions are disclosed publicly but never patented. Ignoring non-patent literature can result in incomplete searches and potential rejections.

6. Document Your Search Process

The USPTO recommends keeping a detailed record of:

• Search queries used

• CPC codes applied

• Results reviewed

• Relevant patents and publications

This documentation helps patent attorneys prepare a stronger application and provides evidence that a proper search was conducted.

7. Seek Professional Assistance

While USPTO tools are useful, the agency also advises inventors to consider professional help. Experienced patent search professionals have access to specialized databases and can interpret complex results more effectively.

Case Study: A small electronics company performed a basic keyword search and believed their invention was unique. After hiring a professional search firm, they discovered five related patents. This allowed them to redesign their product before filing, ultimately leading to a successful patent grant.

Why Following USPTO Guidelines Matters

Ignoring USPTO guidelines can lead to:

• Rejected patent applications

• Wasted filing fees

• Delayed time-to-market

• Potential infringement risks

Following the guidelines ensures a thorough search, improves your application quality, and saves costs in the long run.

Practical Tips for a Stronger Patentability Search

• Start with broad keywords, then narrow down.

• Review both expired and active patents for insights.

• Check inventor names to find related filings.

• Use Boolean operators to combine search terms.

• Update your search before filing to catch recent publications.

FAQs About USPTO Patentability Search Guidelines

1. Is a patentability search mandatory before filing?
No, it is not required by law. However, the USPTO strongly recommends it to reduce the risk of rejection.

2. Can I conduct a patentability search myself?
Yes, but professional searches are more thorough. Experts use advanced tools and understand patent law intricacies.

3. How long does a patentability search take?
A basic search may take several hours, while a professional search may require one to two weeks for comprehensive results.

4. What happens if I skip a patentability search?
You risk filing an application that overlaps with existing patents, which can result in costly rejections or legal disputes.

5. Does the USPTO help inventors conduct searches?
The USPTO offers free tools and tutorials but does not perform searches for applicants. You are responsible for ensuring novelty.

Conclusion

Conducting a patentability search according to USPTO guidelines is essential for any inventor or business. It reduces the risk of rejection, saves money, and strengthens your patent application. By using official USPTO tools, proper classifications, and professional expertise, you can identify prior art early and protect your innovation effectively.

For expert assistance in performing a comprehensive patentability search, visit www.inventionip.com and ensure your invention is truly patentable before filing.