Fargo Office

Murrieta Office

DECEMBER 18, 2020

Preliminary Patentability Search or Preliminary Patentability Opinion

Inventors often ask the question, can my idea be patented? Patents can cover a tremendous amount of subject matter.  There are some limitations but generally speaking when it comes to a utility patent; a process, product, manufacture, or composition of matter are eligible.  This analysis is typically referred to as Subject Matter Eligibility.  Once you determine if your subject matter can receive a patent, then you can start thinking about whether you should apply for one.  You need to consider prior art. 

What is prior art?

Prior Art is basically anything that has come before the filing date of your application.  This prior art can disqualify your idea from being able to receive a patent.  Really when you look at prior art, you need to consider two major concepts when determining if the art will stop you from receiving a patent. 

Prior Art and understanding Section 102 

First you need to consider what is called section 102.  Section 102 is the novelty or anticipation section of patent law.  What this means is that if there is any other item of prior art out there that has all of the elements of your invention, your idea is anticipated and therefore you cannot receive a patent.  Under 102, each and every element of your invention must be displayed in the prior art in order for 102 to disqualify it.  The second major section to consider is 103.  Section 103 is what is referred to as the obvious section of patent law.  This section basically states that if it is obvious to combine two or more items of prior art, even if none of them have all of your inventions elements, your invention may not receive a patent. 

What is Preliminary Patentability Search or Opinion?

When it comes to a Preliminary Patentability Search or Opinion, the goal is to try and determine what the closest items of prior art are, and if they could potentially disqualify you from receiving a patent.  A Preliminary Patentability Search often includes a patentability opinion.  Not all firms include the opinion with the search.  I believe the opinion is one of the more helpful parts of the Preliminary Patentability Search.  This is because patents can be very complicated and convoluted.  An opinion is just a representation by the patent attorney as to how they believe the cited art will impact your patentability.  Patent law in general is all very complicated and has many exceptions and special rules. 

How to get a patent on an idea 

We at Fargo Patent and Business Law have experience running businesses and understand business.  This unique trait can help bridge the gap between the needs of business and the demands of the legal system.  If you have a question, please don’t hesitate to reach out.

Our attorneys specialize in patat law and work with you to help you better understand the patent process. To learn more about our patent law services   or to learn more about the patent process, get in touch with us today. 

Fargo Patent & Business Law, PLLC – info@fargopatentlaw.com – 701-566-7571