Prior art search? Patentability search? What’s the difference?

Prior art search is different from patentability with regard to its aims, its method and the time at which it should be conducted.

Prior to embarking on an innovation project, before even considering filing a patent for an invention, it’s worth conducting a prior art search and/or a patentability search. Companies that come to consult the Sirris Patent Cell for this type of search often use these terms as synonyms. However, this is far from the case: fundamental differences distinguish these two concepts.

Prior art search: To determine if it’s worth taking an innovative idea any further

The aim of a search into the current status of a given technique is to determine which technical needs remain to be satisfied and which problems remain to be solved in a given field. It defines the strategy to adopt to engage in R&D. In some cases, it transpires that we’d best give up on trying to invent the wheel!

Any such search is to be conducted before beginning to develop an invention, then during its development process in order to take new patent requests published in the interim period into account.

An initial approach of which developers are generally spontaneously aware, consists in considering scientific publications and information collected on the Internet to fully grasp the technological advances in their field of interest.
However, to take things further, patent databases need to be consulted, for they contain vast quantities of information that are not, or not yet, published elsewhere; comprehensive, clear, up-to-date and easily accessible information.

Research into the current state of the technique consists in largely combining a series of concepts that describe the field of interest, in order to identify pertinent inventions. The quality of the result depends on search and analysis compilation methodologies.
It does not offer a conclusion on the invention’s patentability.

Patentability: To determine whether an invention is new and inventive for a person skilled in the art 

A patentability search aims at determining whether an invention can be patented or not, in other words, if it satisfies legal requirements with regards to novelty and inventiveness (and industrial application). It focuses more specifically on the invention than on research into prior art, and must be conducted once the product or process has been developed or is currently under development.

It involves an in-depth comparison of all documents on prior art in the same field as the invention. This consists in determining the latter’s principal characteristics, in selecting each previous invention integrating one of the same characteristics and determining whether it is perceived as a natural evolution for a person skilled in the art.

Conclusion

A search into the state of the technique is to be scheduled prior to launching an R&D project. A patentability search must be conducted before filing a patent. Each approach offers its own understanding of prior art, which can facilitate the possible drafting of a patent application.

Patent databases offer a range of other types of searches (freedom to operate, opposition search, overview of competitors, etc.); the Sirris Patent Cell is at your disposal to conduct them.