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Patentability Study , How To

What Is a Patentability Study

This search includes a testing and evaluation of the chances of getting a patent granted. The test may be performed at our patent attorney office. The search takes into account the characteristics of the invention and the technical and legal aspects of patenting.

One possible benefit of this search is to discover weaknesses in the definition of your invention; these points can be strengthened to improve your chances of getting a registered patent, if possible.

Patentability Criteria

Some people mistakenly believe that if their invention does not exist, worldwide, then a patent will be granted to them. Actually, this is just one of the criteria for patentability- this criterion is called "Novelty".
But there are additional criteria which must be met, to pass the examination.

The United States Patent Law defines patentability this way:

35 U.S.C. 101 Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 102 Conditions for patentability; novelty.
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(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 under section 151, or in an application for patent published or deemed published under section 122(b), 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.

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

A Practical Way to Estimate Patentability

An in-depth patentability study is a complex task; it may be expensive and may take a long time.

Ultimately, the patent attorney can't guarantee that a patent will be granted or not; the full extent of the invention becomes clear only after completing the drafting of the patent application; the decision on patentability is made by the patents examiner, a government employee.

If you are not satisfied, you can file a petition at the Patent Office; if still not satisfied, you can sue in Court. It is impossible to predict with certainty the outcome of all these activities.

I recommend another venue: to file a patent application and ask for accelerated examination. If a patent is granted, you get a professional, objective opinion on patentability; if not, you will know the reasons so you can further improve your invention.

An additional benefit, of course, is that you get patent protection.

A registered patent can help you achieve registered patents in other countries as well, based on international agreements.

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