Novelty
Whether the invention has already been disclosed anywhere in the world before the priority date.
Assessment / before filing
Test the filing position before committing the budget.
Drafting and filing are the expensive steps. An assessment establishes whether they are worth taking, and where the application would be weakest if they are.
What is assessed / 01
Four questions, answered against the actual disclosure.
A patentability assessment tests the invention as described against the statutory requirements. It is an opinion on the filing position, not a prediction of grant.
Inventive step
Whether the contribution involves a technical advance or economic significance that is not obvious to a person skilled in the art.
Industrial application
Whether the invention is capable of being made or used in an industry.
Section 3 exclusions
Whether the subject matter falls within a category the Patents Act excludes from patentability.
What we need / 02
A clear description beats a polished one.
The assessment is only as good as the disclosure it is based on. Technical detail matters more than presentation.
- A description of the problem and how the invention addresses it
- The technical elements you consider essential, and which are optional
- Any results, data or comparisons that show the effect
- Known closest alternatives, including your own earlier work
- Any disclosure already made, with dates
What you receive / 03
A written opinion you can act on.
The output is a document, not a verbal view, so that it can be circulated to co-inventors, a head of department or a technology transfer office.
- The closest prior art identified, with citations
- An assessment against each statutory requirement
- Which aspects appear strongest and which are vulnerable
- Any Section 3 issue and how it might be addressed in claiming
- A recommended next step, including where that step is not to file
An assessment that concludes against filing is a successful assessment. It is considerably cheaper than discovering the same position after drafting, filing and examination.
Limits / 04
What an assessment cannot tell you.
Stating these plainly is part of the work.
- Applications remain unpublished for eighteen months, so recent filings may exist and not be findable
- It is an opinion on patentability, not a freedom-to-operate or infringement analysis
- Examination outcomes depend on the examiner, the claims as finally framed and the prosecution record
- No assessment can guarantee that a patent will be granted
Questions
Asked most often.
A search gathers what already exists. An assessment interprets that material against the statutory tests and reaches a view on the filing position. The search is usually the input; the assessment is the conclusion drawn from it.
Where that is the honest conclusion, yes, with the reasoning set out so you can weigh it. A recommendation against filing is a legitimate and frequently valuable outcome.
No. Section 3(k) excludes a computer programme per se, which is narrower than it is often assumed to be. Whether an exclusion applies depends on the technical contribution and how the claims are framed, so it is assessed on the specific disclosure.
It is written to be circulated. Technology transfer offices and research committees generally need a document setting out the position and its basis, rather than a summary of a conversation.
Related work
Other stages of the same route.
Next step