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This guide explains how professional IP search providers conduct a thorough patentability search. It covers every step, from client disclosure and defining scope to selecting databases, building search strategies, analyzing results, and preparing detailed reports. With clear insights into prior art evaluation and expert recommendations, this resource helps inventors and businesses understand the importance of a structured search in reducing risks, saving costs, and strengthening their patent strategy.
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Guide to Conducting a Patentability Search Comprehensive Guide: How Professionals Conduct a Patentability Search This document provides a structured and detailed guide on how a professional IP Search service provider conducts a thorough patentability search. Page 1
Guide to Conducting a Patentability Search Table of Contents 1. Introduction to Patentability Search 2. Understanding the Objective 3. Initial Disclosure and Client Communication 4. Defining the Scope of the Search 5. Selection of Databases and Tools 6. Keyword and Classification Strategy 7. Conducting the Search 8. Analyzing the Results 9. Preparing the Report 10. Delivering Insights to the Client 11. Conclusion Page 2
Guide to Conducting a Patentability Search 1. Introduction to Patentability Search A patentability search, also known as a novelty search, helps determine if an invention is new and non-obvious before filing a patent application. Professional IP search providers rely on structured processes and advanced tools to ensure accuracy. 2. Understanding the Objective The primary goal of the search is to identify prior art—existing patents, publications, or products—that may impact the novelty and non-obviousness of the invention. This helps clients make informed decisions before investing in patent drafting and filing. 3. Initial Disclosure and Client Communication The process begins with collecting detailed information from the client, including invention description, technical drawings, and relevant background. Confidentiality agreements are often signed to protect sensitive information. 4. Defining the Scope of the Search Search professionals define the boundaries of the search, considering technical fields, geographic regions, and the type of documents (patents and non-patents). This ensures a focused and relevant search process. 5. Selection of Databases and Tools Professionals use leading patent databases such as USPTO, EPO, WIPO Patentscope, and commercial platforms like Derwent Innovation or Orbit. Non-patent literature databases (IEEE, ScienceDirect) are also consulted for thoroughness. 6. Keyword and Classification Strategy Experts develop keyword combinations, synonyms, and Boolean operators tailored to the invention. Patent classification systems like IPC (International Patent Classification) and CPC (Cooperative Patent Classification) are also utilized. Page 3
Guide to Conducting a Patentability Search 7. Conducting the Search The search is performed across multiple databases using both structured queries and iterative refinement. Results are cross-verified to ensure no critical prior art is overlooked. 8. Analyzing the Results Search results are carefully reviewed to identify relevant prior art. Professionals analyze technical similarities, inventive step, and novelty. This stage often requires deep technical expertise. 9. Preparing the Report A professional report summarizes the methodology, databases used, search queries, and detailed analysis of relevant prior art. It often includes charts and tables for better clarity. 10. Delivering Insights to the Client The report is shared with the client along with expert recommendations on the patentability of the invention. This enables the client to decide whether to proceed with filing, refine the invention, or abandon the idea. 11. Conclusion A professional patentability search is an essential step for inventors and businesses. It saves costs, reduces risks, and ensures strategic decisions in the patenting process. Page 4
