Introduction: Novelty Search
If the world of innovation and intellectual property is anything to consider, then the point of beginning when figuring out whether or not your invention is good enough to patent is by conducting a novelty search. Patentability search or novelty search is one of the crucial steps of patent application that determines whether an invention is inventive, novel, and deserving protection in the form of a patent. If not being carried out, money and time invested in an invention that will never be able to obtain a patent since prior art overcomes it is great.
In this complete guide, we will cover what a novelty search is, how to conduct the search, why it’s so valuable, and how you can make your future-proof innovation a reality. In this article, we will also tell you things to remember, offer tips on how to conduct the search, and answer questions people may have about the process.
• What is a Novelty Search?
Novelty search or patentability search is an operation where intensive search is done to determine whether an invention is new or disclosed in earlier issued patents, publications, or other prior art records. The search is conducted for novelty examination of an invention, which is among the important points of consideration regarding patentability.
An invention must fulfill three primary conditions to become patentable.
- Novelty: The invention must be new and not previously made public.
- Inventiveness: The invention must not be obvious to a person skilled in the art.
- Utility: The invention must be useful or have utility in some practical application.
A novelty search will be most concerned with whether or not an invention is novel. If there already exists prior art—in the form of a patent, article, or other public disclosure—reasonably similar to the invention, then it could mean that the invention does not have the novelty aspect to it for patentability.
• Why a Novelty Search is necessary?
Save Time and Money: Inventors and companies can decide whether it is worth the effort to seek a patent or not depending on whether novelty search reveals prior art. Knowing beforehand whether an invention is novel or non-novel saves time, effort, and money invested in patent applications and would-be legal expenses.
Validate Patentability: Novelty search ensures if there is any already existing patent or prior patents available in the public domain. Novelty search informs the inventors if their idea is new or not and helps avoid them wasting resources on already patented ideas.
Increase Likelihood of Successful Patenting: Well-done novelty searching is capable of improving the likelihood of successful patenting. Identification of potential conflicts gives inventors the ability to advance their inventions such that they may bypass existing art and improve the scope of their patent claims.
Competitive Advantage: Inventors may render their invention new, but more significantly, inventive, by discovering existing patents and improvements in their field of business. This acquires a person with a competitive edge in the marketplace through the ownership of a unique and valuable intellectual property asset.
Steps in Conducting a Novelty Search
A novelty search is an extremely sophisticated process in that it involves knowledge of patent law in addition to the technical subject matter of the invention. The following is a step-by-step description of how a novelty search is typically conducted:
Step 1: Define the Invention Clearly
Before a novelty search, the invention must be adequately defined. It implies that the fundamental attributes of the invention—function, shape, and technology field—ought to be sufficiently known. Effective definitions of the invention will help the search remain focused and provide the most relevant prior art.
Step 2: Define Relevant Keywords and Classification Codes
Secondly, the researcher needs to select appropriate keywords, technical terminologies, and classifying codes for the invention. These words will be of great assistance while searching patent databases and research articles. It is also recommended that one gets familiar with the International Patent Classification (IPC) or Cooperative Patent Classification (CPC) system so that the search is limited to a particular field of technology.
Step 3: Use Patent Databases and Search Engines
Novelty searching is performed through various patent databases. Patent databases hold millions of patents from various jurisdictions of the globe. Some of the well-known patent databases are:
- United States Patent and Trademark Office (USPTO): Official United States patent office database.
- European Patent Office (EPO): Holds European nation patents.
- World Intellectual Property Organization (WIPO): Gives access to international patent applications under the Patent Cooperation Treaty (PCT).
- Google Patents: A readily accessible site on which to conduct patent searches internationally.
Through the use of these tools, the novelty searcher can discover whether other inventions or concepts are already patented. One must review the claims in a patent, figures, and descriptions of similar patents to ascertain how much alike they are to the invention being searched for.
Step 4: Analyze Prior Art
After identification of publications and patents relevant, evaluation of them is the next step. Most essential at this juncture is verification of whether similar or same invention is provided by any patent in the literature available or from public records. Primarily, this novelty search will most probably reveal patents having close similarities of claim or technology.
You are required to compare at this evaluation stage
- Claims: The claims of the patent define the scope of protection. Closely examining the claims of the prior art will enable you to determine if they are overlapping with your invention.
- Patent Specifications: These are technical descriptions of the invention in detailed form. A specification can give you an indication of whether a previously patented invention would be deemed similar or overlapping with yours.
Step 5: Evaluate Results
After reading the prior art, the next step is to check if your invention is novel or not. Unless other inventions similar to yours exist, your invention will have a good chance of meeting the novelty criterion for patentability. But if you find prior art, you may need to modify your invention or restrict the scope of your patent claims in such a way that you will not have disputes.
Step 6: Draft a Novelty Search Report
The final step is to report the result of novelty search in a novelty search report. The report needs to include an overview of the searching process, significant findings, and evaluation of the potential novelty of the invention. The report also needs to include a list of significant prior art references, and if prior art is found, the report needs to include an evaluation of whether the invention is still novel.
• Key Benefits of a Novelty Search
- Avoid Risk of Patent Infringement: Through discovery of the existence of already patented items in advance, a novelty search saves inventors from unintentionally infringing on existing patents. This avoids the cost and threat of costly litigation and may avoid future legal wars.
- Maximize Return on Investment: Novelty search is an economic strategy to make sure time, money, and resources invested to come up with an invention will be paid back in the form of a successful patent grant. It can channel energies to ideas of real novelty and save wasteful expenditures on inventions of no patent value.
- Consolidate Patent Claims: Once prior art is identified, inventors can develop a better invention and focus on new characteristics that differentiate them from the current patents. This can lead to better, more valuable patent claims.
- Commercial Value: The novelty search could identify the technological areas in which intellectual property protection does not exist, and this gives innovators and companies an opportunity to come up with new and novel products or services that can be patented and sold.
- Strategic Positioning: A novelty search alerts inventors to the competition. It enables them to understand spaces of innovation and envision possibilities in the development of a niche for their invention or technology.
• Common Problems when Performing a Novelty Search
As crucial as performing a novelty search, it is not always an easy task on several fronts:
- Technical Patent Vocabulary: Patent reports are usually composed in extremely technical and legal language, which is extremely difficult to comprehend at times. Technical expertise and patent law are required to read such reports.
- International Patent Situation: Patent for inventions in foreign countries and regions is possible. Performing an extensive novelty search can include searching for data from various international patent records, which is time-consuming and expensive.
- New Technologies: The technology continues to advance, and the prior art might be in the form of latest published research papers, patent applications, and other published reports. It might not be possible for the researchers to monitor all such developments.
- Concealed Prior Art: There may be prior art that is not included on the patent databases or even not in the local language, and it can be hard to get all relevant information.
Novelty Search or Freedom to Operate (FTO) Search
Novelty and FTO searches both concern intellectual property but in different roles:
- A novelty search identifies if an invention is new and patentable.
- A freedom to operate (FTO) search decides if an invention is infringing other patents that will bar its sale.
An FTO search is done when an invention is patented or under commercialization, whereas a novelty search is done in the early stages of conceptualizing an idea for a product.
Conclusion: Why a Novelty Search is Important
Finally, conducting a novelty search is perhaps the most crucial task for any individual who dreams of being issued a patent. As an inventor, entrepreneur, or business organization, a novelty search guarantees that your invention is actually novel and patentable. By establishing prior art early, you can avoid pointless investment in unpromising concepts, limit the scope of your patent claims, and have a greater success rate of being issued a valuable and enforceable patent.
The novelty search not only protects your intellectual property but also gives you an advantage over competitors in the market because your invention is made new. Even though the process of search may be challenging and require experience, the benefits outweigh the risk of proceeding without conducting a proper search.
• Frequently Asked Questions (FAQs)
1. How long does a novelty search take?
A novelty search will in most cases take a week or two to a week or two based on the inventiveness of the invention as well as the extent of the search. Advanced technologies will take longer to search thoroughly.
The cost of a novelty search also depends on the complexity level of the invention and scope of the search. Novelty searches can vary from $1,000 to $5,000 or higher, depending upon the level of detail and geographical area searched.
2. Is a novelty search identical to a patent search?
Yes, novelty search is a type of patent search aimed at establishing novelty of an invention only. But other types of searches fall within patent searches, e.g., freedom to operate (FTO) or invalidity searches, aimed to other intellectual property law areas.
3. Can I conduct a novelty search myself?
Though one can perform a novelty search individually through patent databases, in most situations, it is best to let the job be done by a patent professional or a lawyer. Patent professionals are concerned with the niceties of patent law and will be positioned to properly understand complex patent documents.
4. what if prior art is discovered through a novelty search
If prior art is found, the inventor might be asked to change the invention, limit the claims of their invention, or find other means of making the invention novel. In some cases, the inventor may choose to abandon the idea if it is not feasible to make it different enough from prior art.
5. Is a novelty search binding under the law?
No, novelty search is not legal. It is an initial search which concludes as to the novelty of a product. However, a positive outcome of a novelty search may elevate the likelihood of obtaining a patent considerably.