7 Things To Keep In Mind While Conducting Novelty Search
Before business files for a patent, they need to evaluate the patentability of the invention. A Patentability Search, also known as Novelty Search, helps to identify the prior art references and determine if the invention is new and original before filing a patent application. In addition, an inventor can issue a patent only if the invention is recognized as unique, functional, and non-obvious.
A Novelty Search report indicates the strength of your patent application. It helps you to decide if you should continue with your patent application as it is, change it or withdraw it. To obtain a patent on your invention, it should fulfill three essential requirements. The invention should be novel, inventive, and industrially applicable. Novelty implies that the invention has not been released to the public. An invention can be novel or innovative if it adds value or improves something which already exists. A simple invention can be inventive. Moreover, the invention should be susceptible to industrial application to qualify for a patent.
A Novelty Search can improve your patent quality. You can outsource it to a patent attorney to optimize the search results. Conducting novelty searches is essential so that when patent litigation occurs, strong patent validity will enable you to sue the infringer for remuneration appropriately. Robust Novelty Search will help to keep your patent rights intact. Here are few essential pointers you should consider while conducting a patentability search.
When Should You Conduct Novelty Searches?
You can begin the patentability search before initiating the patent process. Hence, before you start the patentability opinion, prepare, file, and finalize your patent application, you should conduct the novelty search. It helps avoid extra time and expense in creating a product or service that may not be eligible for a patent.
Identify The Novel Elements Of The Invention
You need to list out the novel features of the invention systematically. It helps to identify the keywords and outline the right search strategies. Uncovering data relevant to your technology enables the inventor to draft broader claims and focus on novelty points to increase the patent’s probability. Conducting primary research on the invention is of paramount importance. It helps to quickly identify the integral keywords to optimize the comprehensive coverage of the prior art search.
Searching Patent Databases
Most patent offices give free access to the patent documents through public databases. Selecting the appropriate patent database largely depends on the information type you want to find. When selecting a database for a patentability search, you need to consider specific essential criteria.
Identify the year coverage to determine if the database includes a historical patent. Ensure that the database is regularly updated. Check if the database consists of patents from different countries. Also, assess the current patent classification codes in the database. It would help if you searched in these databases to extract the relevant prior art. Focus on keywords to extract relevant information.
Screen Prior Art
While conducting Novelty Search, you need to screen prior art to categorize it based on similarity with the invention. First, you need to read the patent specification by focusing on the patent claims and embodiments and classify the prior art based on their relevancy. It helps to identify the closest prior art and define the scope of protection in patent claims. Then, for each novel element, you need to compare the prior art with novel aspects of the invention to assess patentability.
Who Can Perform The Novelty Search?
An inventor can conduct a preliminary search through U.S. patents and publications to identify the invention’s patentability. They may also employ patent attorneys or agents to perform the search. However, the patent professionals are more equipped to perform the Novelty Search.
You can also outsource it to patentability search companies covering various technical domains and have the right tools and knowledge to carry out the Novelty Search. They look into the several paid or free patent databases using different search techniques like keyword search, International Patent Classification (IPC) based search, assignee search, and more to produce relevant results for the concerned invention. The patent lawyer will require a detailed description of your invention and its intended use to conduct the patentability search. In addition, you need to provide the functional prototypes, photographs, or figures to your patent lawyer.
Limitations Of A Novelty Search
Even if you conduct a thorough novelty search, there are always chances of the emergence of non-public prior art on record. Hence, the USTPO may claim that the invention is not novel. It would be best if you modified your invention till it appears completely new. Sometimes, the patent attorney drafts the claims broadly for an initial rejection of the claims. They narrow the claims later to avoid the prior art during examination for securing the patent.
To Conclude:
These are some of the essential points you should consider before carrying out a patentability search. Novelty Search enables the inventor to assess the potential viability of an idea carefully. It helps determine if the invention is novel or not and allows the inventors to avoid unrealistic expectations, leading to wasted time and money.