Why Do The Majority of Successful Innovators Conduct a Patentability Search?

Have you ever filed a patent application that got refused?

This is a very common occurrence. Generally speaking, more than half the patents filed in most jurisdictions get refused. The patent grant rate is approximately 50% in India and 52% in the USA, the numbers are not likely to be in an inventor’s favor at first glance.

Clearly, this situation is not ideal. If you’re going through all the effort of filing and prosecuting a patent, you’d like an assurance of something tangible coming to you at the end. A granted patent allows you to monopolize a particular technology for about 20 years, which can be a massive boon to anyone working in today’s fast-moving and competitive industry.

So, what is it that makes a patent application get rejected? With our personal experience in the field, we’ve noticed a few recurring issues.

Why Does This Happen?

The fact is, most patents get rejected because they do not, at the time of filing, fulfil the necessary conditions to get a patent.

Every patent application must mandatorily fulfil certain basic requirements, with no exceptions. These may vary a little between jurisdictions in terms of specifics, but the general ideas are common throughout the world.

Patent attorneys and experts make use of ‘NUNS’, a simple mnemonic to keep track of these criteria. If your initial application has been made keeping all the NUNS requirements in mind, your application’s chances of getting granted increase exponentially.

In fact, an application with airtight fulfilment of the NUNS criteria might even be that rare phenomenon- a patent application that is granted immediately, without any objections from the patent office.

NUNS stands for four factors, Novelty, Utility, Non-Obviousness, and Subject Matter Eligibility.

Novelty

Novelty is the first thing you think of when you have a patent. A patent is special because the invention is new, has never been seen before, and will bring about progress (incremental or otherwise) to existing technology. If there is no novel element in your invention, there is no possibility of you getting a patent. Your invention must, at the very least, be capable of something new, or do something already known in an entirely new manner.

Utility

Utility is the simplest of the requirements in many ways. Any patent you apply for must be useful. The requirements for what counts are useful differ between jurisdictions, but it’s very rarely that they will be unmet. After all, if you are going through all the trouble of patenting your technology, it is almost certainly likely to be useful in some way or another.

Non-Obviousness

Non-obviousness, also known as the “Inventive Step” in many countries, is usually connected to novelty. It focuses on what inventive idea the innovator had when making the subject of the patent. The basic requirement is that this idea must not be obvious to a person who is skilled in the field of that technology.

If your inventive step is only something that surprises those who are unfamiliar with the technology, chances are your patent will face an objection and may even be rejected. This requirement is also why patent examiners are people who are skilled in the field of that technology- without such knowledge, judging this step would be impossible.

Subject Matter Eligibility

The final requirement, subject matter eligibility, also has jurisdictional variations. In principle, it is simple- there are a number of already decided subject matters that are not granted patents by default.

For example, pretty much all jurisdictions do not allow for the patentability of newly discovered scientific knowledge. Some, but not all jurisdictions, do not allow medical methods to be patented. The types of organisms you can patent (typically related to gene-engineering) also vary between countries and regions.

The patentability of things like software and business methods have been debated hotly for many years at this point, and how that patentability is judged varies between jurisdictions. Some jurisdictions may have comparatively rarer restrictions, such as a ban on patenting anything that goes against “public morality”.

Key Takeaways

Now that we know what these four requirements are, how do we actually make sure we fulfil them?

Being careful during the filing process is certainly one way of doing this, but there’s another factor that a lot of inventors miss, and that is the patentability search.

The search concentrates on the two most difficult aspects of patentability; novelty and non-obviousness. A thorough search can give you insights on what technologies are similar to yours, and how you can construct your draft so as to focus on the actual, novel and non-obvious element you have at your disposal.