A Complete Guide to Patent Novelty Search


What is Patent Novelty Search or Novelty Search? What is the need of Novelty Search? We are wondering whether these questions have ever occurred to you. Well, if you’re thinking about patenting an invention, then you must know the answers to these questions. Certainly, you don’t want to invest your resources in already disclosed invention. We must tell you that seeking for patent protection in the U.S. requires a lot of resources. Therefore, you have to make sure that your invention is novel. Moreover, your invention should be non-obvious and useful. Patent Novelty Search helps us in identifying whether an invention is novel or not. In this article, we’re going to give you deep insight into patent novelty search.

The Basics of Patent Novelty Search

Patent Novelty Search aims to dig out pre-existing knowledge for checking the uniqueness of the applicant’s invention. This sort of pre-existing knowledge search in a particular technical field is known as prior art search. It is performed on behalf of any patent applicant. Patent novelty search basically focuses on a number of aspects:

  • It basically works for testing the novelty feature. Moreover, it’s difficult to claim non-obviousness feature by using the limited chances of finding drafted set of documents.
  • You may know whether the invention or its main concept has previously been disclosed publicly.
  • It determines whether to pursue patent protection or not by checking for its novelty.
  • It tells the weak points in the invention or areas that are similar to the existing patents. Thus, it helps out in strengthening the patent application.
  • It is generally performed before the filing of the patent application.

This search is beneficial in determining the patentability of an invention. Moreover, the following reasons help you understand the important of search.

Enhances patent drafting

It enables the patent drafter to emphasize on the advanced technology in a better way. As a result, it clearly distinguishes the invented work from the prior art. It requires deep knowledge about the prior art. Thus, you can draft novel claims in a more relevant and precise way with the invention.

Enhances prosecution speed

It helps the applicant make corrections and be careful in areas that are anticipated as weak sections. Moreover, it prevents the prior art before the Examiner’s own search. This depends upon the time, budget, and skills of the searcher.

Enhances defensibility

The process ensures that the examiner considers the most relevant prior art in future patents during prosecution.

Related Article: Novelty Search Basics: Things You Should Know

The truth about Patent Novelty Search

A patent novelty search may appear as a search that finds concepts and products similar to your invention. You may take a patented invention as a reference or a base to invent something new as its derived product. It does not hamper the novelty terms until and unless the derived product is non-obvious. Thus, you must not refer patent novelty search as a product clearance or an infringement search.

Patent searches do not place any time-based constraint or do not limit the search. The searcher needs to look into all evidence in the past. Moreover, the searcher considers public use or sales, granted patents, non-patent literature, and all the patents published anywhere. Cost is the only factor that limits the extent of a patentability search. Prior art search performed by any skilled searcher believes to be the most cost-effective way for searching prior art.

Patentability Search Types

There are two classes of patentability searches. We have described both of them below:

  • Basic patentability search

It’s a cheaper way of searching only in properly classified U.S. patents and published patent applications. This search provides rationally priced results that aren’t comprehensive but still works.

  • Premium Patentability Search

It’s a costlier and detailed way to search in European and Japanese patent applications. The applications may be issued or published by the USPTO, EPO, PCT, and JPO.

You may not find these two searches in periodicals and textbooks. Moreover, they are unorganized, and finding them may cost a lot more time and money.

Critical Dates

  • Invention date

It’s the date on which the applicant files about his/her invention in the patent office. This date is the first-to-file date, and the U.S. became the first-to-file country on 16th March 2013. To see novelty, countries that follow this law only require references. The references exist anywhere before the date of filing a patent application.

  • Priority date

This date is of one year before the filing date. Novelty could be challenged:

  1. The references stated in your invention are in publications a year before the application date.
  2. The references are in public domain before the application date.

The need of Patent Novelty Search 

The following are some facts about patent and prior art search:

  • Not legally recommended

The patent office doesn’t need you to do prior art search before the filing of an application. The U.S. Court of Appeals for the Federal Circuit has denied the use of it. It has stated that the patent inventors do not hold any rights to conduct any prior art search.

Adding to this, both the USPTO and the EPO agree for the fact applicants must conduct patentability search. However, there is no requirement for conducting prior art search.

  • Incurs extra cost

Performing prior art search incurs extra cost over the main cost of preparing, filing, and prosecuting a patent application.

  • Provides guidance

Performing prior art search will forecast the misleading, problematic areas of the invention. Thus, you may avoid errors that arise during the time of prosecution. You can correct errors later. It creates more opportunities for receiving a patent without any delay.

  • Self-Conducted approach

No law states that you have to hire any professional searcher or attorney to do search. It can be self-conducted depending on the applicant’s understanding level and skills related to the technology used.

It’s a self-conducted approach. However, it is still better to take help or advice from an experienced patent search professional.

Post-Filing of Patent

Once the filing is done, the USPTO starts its official examination process with the searching phase. It’s difficult to perform patent searching by a beginner. It requires a lot of skills and experience to find the right details from the right place. The EPO believes in deep insight and eyes for details to interpret the results. Without these skills neither the inventor nor a patent searcher is able to do searching correctly.

Thus, it is recommended to take help from an experienced patent attorney.

How can TPSF assist you?

We are a team of experienced search experts serving the IP industry for more than 8+ years. Moreover, we have conducted 100+ search assignments on a daily basis. Our team deal in multiple technical domains covering 100+ countries in a vast array of languages. We deliver your results timely without compromising on quality.

To know more about our services and pricing structure, please visit our service page.

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