Patentability Opinion

A patentability opinion is a legal opinion based at least in part on the results of a novelty search.  It may provide some guidance as to whether an invention warrants patent protection, and aids in identifying novel features of the invention.  A patentability opinion is just that, an “opinion.” It is not a guarantee that a patent application will obtain a patent.  Upon its examination of a patent application, the Patent Office (i.e., the patent Examiner) will conduct its own search and may reject the patent application based on its findings, and these findings may differ from the findings of the novelty search, which is the basis of the patentability opinion.  It should be noted that rejections may often be ill-founded and overcome, and that a patentability opinion may prove to be more reliable, subject to quality of the search and the opinion.

The reliability of a novelty search may vary in accordance with the time and resources employed for conducting the search, which is reflected in the cost or the fee authorization of the search.

Inventors are often so intimate with an industry of a product line that they have a good idea whether their invention is novel, and can identify what they consider to be novel features.  In these instances, the inventor may choose to refrain from ordering a patentability opinion.

In some instances, a patent applicant may, in the course of business, decide against evaluating the patentability of an invention, and avoid the expense of a patentability opinion.  In these instances, applicants may simply file patent applications and wait for the Patent Office to evaluate the patentability of the invention in the course of examining the applications.

In other instances, a limited patentability opinion may be ordered, wherein the amount of time and expense associated with the opinion is limited to a relatively small dollar amount, such as $500 USD, just to get a general feel for patentability.

Still, in other instances, a more comprehensive patentability opinion may be ordered.  The typical cost for such an opinion varies according to the complexity of the novelty search and the invention.  For a relatively simple mechanical invention, the estimated cost is about $2,000 USD.

As a related issue, although there is no duty to conduct a novelty search, if a search is conducted, keep in mind that in the United States, there is a duty to disclose to the USPTO any information relevant to the patentability of the invention.  This includes any information of which the inventor is aware, which of course includes the results of a voluntary novelty search.

A patentability opinion should clearly describe the invention and address activities that trigger statutory bars to patent protection.  These activities include publication of the invention, public use, and a sale or offer to sell the invention.  The opinion should disclose the field of search (i.e., patent classes and sub-classes), the keyword search strategy used, and names of Examiners consulted and Technology Centers.

The opinion should provide a list of references (i.e., US and foreign references and non-patent literature) discovered in the search, and be accompanied by copies of any foreign patent references and non-patent literature.

The opinion should report the relevance of each cited reference (i.e., why it is cited) and distinguish the invention from the cited references.  The opinion may also provide one or more exemplary independent claims that may be patentable over the search results.

If you have a question about patentability opinions, askme at thedford@askmeip.com.