Before investing in drafting and filing a patent application, inventors and companies can commission a patentability search to assess whether an invention is likely to meet the legal requirements for patent protection. A search identifies relevant published patents, applications and technical literature; the subsequent patentability analysis examines the invention against that prior art. It is a risk assessment, not a guarantee that a patent will be granted.
This guide explains how to conduct a patentability search, where to look for prior art and how to interpret the results before filing in Israel or abroad. It is based on the methodology described in our Hebrew guide, with additional practical guidance for foreign applicants and patent counsel considering Israeli protection.
What Is a Patentability Search?
A patentability search, sometimes called a patentability or novelty assessment, investigates whether relevant earlier technical disclosures may prevent an invention from satisfying the criteria for a patent. The analysis should begin with the technical features the inventor regards as new, rather than with a product name or an unstructured search for similar products.
Under Israel’s Patents Law, 5727-1967, the central substantive questions include novelty, inventive step and industrial applicability. The law also requires that the claimed subject matter qualify for patent protection under the relevant provisions. Search findings can inform those questions, but the claims ultimately filed, their effective dates and the full disclosure all matter to the legal assessment.
Novelty
An invention must be new over the relevant prior art. A novelty assessment asks whether a single earlier disclosure contains the elements of the claimed invention in the manner required by patent law. The potentially relevant material is not restricted to granted patents: patent applications, articles, technical manuals, conference materials, commercial documentation and other publicly accessible disclosures can matter.
The practical question is whether the invention’s distinguishing technical combination has already been disclosed, not simply whether a product with a similar marketing description exists.
Inventive Step
An invention can be new yet still lack an inventive step. The assessment considers whether the differences between the claimed invention and the prior art would have been obvious to a person skilled in the relevant technical field at the material date. Multiple earlier references may be relevant to this assessment, but they must be analyzed under the applicable legal standard; the existence of separate technical features in unrelated documents does not automatically establish obviousness.
A useful search report therefore identifies the closest references, the differences between each disclosure and the proposed invention, and the reasons those differences may or may not support an inventive step.
Industrial Applicability and Practical Function
Patentability analysis also considers whether the invention is capable of industrial application and serves a practical technical purpose. The commercial profitability of a product is not the legal test. An invention can meet the industrial-applicability requirement without having an established market, and strong market demand cannot remedy a lack of novelty.
Patentability Search, Novelty Search and Freedom to Operate: Different Questions
The terms are sometimes used interchangeably in commercial discussions, but the objectives differ. A preliminary novelty search focuses primarily on earlier disclosures that may anticipate the invention. A broader patentability review assesses those references in relation to inventive step and other requirements. A freedom-to-operate (FTO) investigation asks whether making, using, selling or importing a product may infringe another party’s enforceable patent claims in the relevant territory.
An expired patent or a publication that prevents a new patent from being granted may not pose an infringement barrier. Conversely, a product may contain a patentable improvement and still fall within the scope of an earlier patent owned by someone else. For a separate discussion of launch and infringement risks, see Freedom to Operate in Israel.
Step 1: Define the Invention and Search Questions
Before using a database, prepare a clear technical description of the invention. Identify its principal components, method steps, intended function, technical problem and claimed improvement over known solutions. Distinguish features essential to the concept from optional embodiments and commercial preferences.
For example, consider a smart underfloor-heating system that uses thermal sensors, automated controls and communication with a remote device to improve energy efficiency. The relevant search concepts might include floor-heating control, temperature sensing, predictive control, adaptive energy management and wireless monitoring. A broad search for “smart heating” alone may miss closer technical documents.
When possible, frame a preliminary independent claim or a structured feature list. It provides a more precise basis for comparing the invention to references, while remaining subject to revision as the search develops.
Step 2: Identify Relevant Patent Classifications
Patent databases can be searched using International Patent Classification (IPC) and Cooperative Patent Classification (CPC) codes. These classifications group documents by technical subject matter and can reveal references that use different terminology from the inventor.
In the heating example, classification areas concerning heating systems and controls, including potentially relevant subclasses under F24D, can serve as starting points. The exact classification must be confirmed against the actual technology and the current classification definitions; a broad class is not an exhaustive or definitive description of every relevant invention.
Combine classification searches with carefully chosen technical keywords, synonyms and functional descriptions. Search in more than one language where relevant to the industry and the available databases.
Step 3: Search Patent and Non-Patent Literature
The principal free search tools include Google Patents, the European Patent Office’s Espacenet and WIPO’s PATENTSCOPE. Each resource has different coverage, search functions and presentation of patent-family information.
A structured search may combine keywords, IPC or CPC classes, applicants, inventors, publication dates and citations. Documents cited by an examiner, later patents that cite a close reference and other members of the same patent family can help identify relevant technical developments.
Patent databases should not be the only sources. Scientific articles, dissertations, standards, product catalogues, manuals, conference disclosures and other public technical materials can contain earlier disclosures. Search quality is influenced by the technical field, available languages, database coverage and the time and resources allocated to the work.
Step 4: Review References Feature by Feature
It is rarely sufficient to examine patent titles and abstracts. Read the most relevant specifications, claims, drawings and cited passages. Determine what each reference actually discloses and compare its technical teaching with the proposed invention’s essential features.
For novelty, a feature-by-feature comparison can identify whether one document contains the proposed combination. For inventive step, identify the closest technical starting point and analyze the differences, their technical contribution and whether the relevant combination would have been obvious under the law being applied.
A practical comparison table can list each feature of the proposed invention, the passages in the closest references and any unresolved distinctions. Such a table provides a useful starting point for patent drafting and for discussions with the inventors, but it does not replace legal analysis.
Step 5: Assess Industrial Applicability and Draft a Search Report
The report should describe the invention searched, search strategy, databases used, relevant classification codes, principal references and substantive findings. It should distinguish particularly close disclosures from more remote background literature.
The conclusions should address apparent novelty, possible inventive-step objections and the invention’s practical applicability. Where the available information is insufficient, the report should say so. It may recommend revising the proposed claim scope, gathering further technical evidence, searching additional fields, conducting an FTO review or proceeding with a patent application subject to identified risks.
An examiner may later locate material that the search did not find, and unpublished applications may become public only after the search. No responsible report should characterize a clean search as a definitive confirmation of patentability.
Advantages and Limitations of Conducting a Search Before Filing
An early assessment may identify a serious obstacle before significant patent drafting and prosecution costs are incurred. It can also reveal the technical contribution most worth claiming, support a better description of alternative embodiments and help a business decide where to allocate its patent budget.
However, the search takes time and entails professional costs. It is not necessarily exhaustive, particularly in rapidly evolving technical fields or where useful materials are difficult to retrieve. Search findings may be ambiguous, and inventive step commonly requires legal and technical judgment rather than a mechanical database comparison.
In some circumstances, a company may decide to file promptly to secure a filing date and then carry out further searching. The appropriate sequence depends on publication plans, confidentiality, commercial deadlines, technical maturity and the relevant patent jurisdictions. Inventors should avoid public disclosure before obtaining advice on filing and priority strategy.
Implications for Filing a Patent Application in Israel
For foreign applicants, the same underlying technical search can inform a global filing program, but patentability and claim-drafting questions must still be assessed under the applicable national or regional law. An Israeli national filing or a PCT application entering the Israeli national phase may be examined against relevant prior art, and the claims must satisfy Israeli substantive and procedural requirements.
The international search report for a PCT application is valuable but does not guarantee grant in Israel. Israeli examination may involve additional references, differing interpretations or objections requiring local legal arguments and claim amendments. Foreign counsel can provide the relevant search and examination reports together with the application and technical instructions to their Israeli associate.
For the full Israeli prosecution process, see Patent Prosecution Process in Israel. For instructions to local representatives, see Instructing Israeli Patent Counsel. Drori-Stav IP advises inventors, international patent attorneys and companies on patent searches, patentability strategy and filing in Israel.
