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Patentability searches

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Patentability searches give us an idea of the current state of the art in the field of your invention. Awareness of any prior art that could pose a threat to the patentability of your invention can help us figure out how best to overcome it.

PATENTABILITY

There are a number of different criteria which an invention must satisfy in order to be found to be patentable.  These include the following:

  1. Must have patentable subject matter;
  2. Must have utility; and
  3. Must be novel/unobvious.

A patentability search can determine whether an invention meets these criteria.

The novelty of an invention is set out in one or more “claims” which form the core of every patent application.  Claims specifically point out and define the scope of the invention.  In drafting a patent application the general goal is to claim as broadly as possible without overlapping previously known inventions or ideas, while at the same time fully describing the essence of the invention.  Prior art is the yardstick against which the Patent Office measures the novelty of an invention.  In addition to published patents, prior art can be any printed information in books, articles, brochures, as well as general knowledge that was made public before the date of filing of the patent application.  Such prior art can render a patent application unpatentable for lack of novelty, or on the basis that the invention is obvious.  In terms of a lack of novelty, there are two key terms used to further refer to the status of an invention vis-à-vis the prior art.  These are “anticipation” and “obviousness”.  “Anticipation” occurs when the elements of a certain claim in a patent or patent application are all described in a single prior art reference – a “dead ringer” reference if you will.

In contrast to anticipation, obviousness renders an invention unpatentable if the invention can be said to be obvious by combining more than one prior art references.  The question is whether at the date a patent application is filed an unimaginative skilled technician, in light of general knowledge and the prior art available to the technician at that date, would be led directly and without difficulty to the invention.  There is a four-factor test to showing obviousness:

  1. identify who the “person skilled in the art” is, and identify that person’s common general knowledge;
  2. determine the inventive concept of the claim in question;
  3. identify the differences, if any, that exist between matters forming the “state of the art” and the inventive concept of the claim; and
  4. consider whether the differences would have been obvious to the person skilled in the art or whether they require a degree of inventiveness.

The invention is obvious if no degree of inventiveness is required.  There may also be a question as to whether an invention was “obvious to try”.  For a finding that an invention was “obvious to try”, someone must convince a judge or the Examiner that, on a balance of probabilities, it was more or less self-evident to try to obtain the invention.  This is a high standard to meet, since mere possibility that something might turn up is not enough.

In terms of chronological relevance, there are a couple of key dates and concepts to understand as well in terms of the scope and applicability of various prior art references uncovered in the patentability search. Generally speaking the date at which relevance of a prior art reference is determined is the date of filing of your own patent application. Any patent references or other prior art references which are created or published in advance of your filing date are strictly speaking relevant in the perspective of an assessment of novelty and patentability. Items that are created or published after your filing date strictly speaking and generally will not be relevant.

PATENT SEARCHING

An inventor may wish to obtain an assessment of the patentability of their invention prior to incurring the additional drafting and filing expenses discussed herein.  Patents from all countries are relevant to the patentability of an idea in Canada (and elsewhere) and while a search of Canadian and U.S. patents is not exhaustive, it typically does provide a good idea of the state of the prior art as it relates to the proposed invention at a reasonable expense.  In addition this search can locate and provide copies of prior art which is required for the drafting of the patent application.  Patents and patent applications which are disclosed by their inventors in turn provide a great deal of useful technical information to those interested in searching patents for such information.

There are numerous advantages to doing a comprehensive patentability search before proceeding to draft and file a patent application.  These include the ability to fine‑tune your own patent application based on problematic pieces of prior art revealed in the search to avoid Patent Office rejections based on those at a later date.

WONDERING IF YOUR INVENTION IS PATENTABLE? We can help.

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OUR TEAM:

Cory Furman, Q.C.

Lawyer,
Patent & Trademark Agent

Anna Hengen

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Lorna Giljam

Business Manager

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