Introduction: Seeking for U.S. patent protection requires presence of features like novelty, non-obviousness, and usefulness in the invention. Another aspect of patent protection is Patent Novelty Search or Novelty Search which 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, which 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, since the non-obviousness feature is difficult to be claimed using limited chances of finding drafted set of documents.
- It aims to determine whether the invention or its main concept has previously been disclosed publicly, before the filing date or not.
- It determines whether to pursue patent protection or not by checking for its novelty.
- It determines the weak points in the invention or areas, which are similar to the existing patents. Thus, helping out in strengthening the application.
- It is generally performed before filing of the patent application.
This search is beneficial not only in determining the patentability of an invention but also for the following number of reasons:
- Enhances patent drafting: It enables the patent drafter to emphasize on the advanced technology in a better way so that it clearly distinguishes the invented work from the prior art. It requires deep knowledge about the prior art, so that novel claims would be drafted in a more relevant and precise way with the invention.
- Enhances prosecution speed: It enables the applicant to make corrections and be careful in areas which are anticipated as weak sections. It allows claims to be made in such a manner that it prevents the prior art before the Examiner’s own search. This depends upon the time, budget, and skills of the searcher.
- Enhances defensibility: It ensures that the Examiner considers the most relevant prior art in future patents during prosecution.
Also read : The difference between a Freedom To Operate (FTO) search and Patent search
Truth about Patent Novelty Search
It is to be noted that a patent novelty search may sometimes appears as a search that finds concepts and products similar to the current invention that might infringe the current invention. But the fact about novelty is that if any patented invention is taken as a reference or a base to invent something new as its derived product, then it does not hamper the novelty terms until and unless the derived product is non-obvious. Thus, a patent search must not be thought of as a product clearance or an infringement search.
Patent searches does not place any time based constraint or does not limit the search on how far back could be searched for prior art. It is allowed to look into all evidences of past public use or sales, granted patents, non-patent literature, and all the patents published anywhere in the world (See the countries and languages covered by us). Cost is the only factor that limits the extent of patentability search. On the other hand, prior art search which is performed by any skilled searcher believes to be the most cost effective way for searching prior art.
Patentability Search Types (Click here)
There are two classes of patentability searches, which are described below:
- Basic patentability search:It is a cheaper way of searching only in properly classified U.S. patents and published patent applications. This search provides rationally priced results which are not that comprehensive but still works.
- Premium Patentability Search: It is a more costly and detailed way to search in European and Japanese patents applications (which may be issued or published by the USPTO, EPO, PCT, and JPO).
None of the two, searches in periodicals and textbooks since they are not properly classified and finding them would cost a lot more time and money.
- Invention date: The date on which the applicant files about his/her invention in the patent office. This date is known as the first-to-file date and U.S. became the first-to-file country on 16th March, 2013. Countries which follows this law, only requires references that are published or mentioned anywhere before the date of filing a patent application, to claim novelty.
- Priority date: This date is of one year before the filing date. Novelty could be challenged if the references that are published or mentioned in the new invention, are found in publications of more than one year before the application date or if found in public use or on sale in the U.S. before the application date.
Need of Patent Search (Click here)
The following are some facts about patent and prior art search:
- Not legally recommended: Performing prior art search is not legally recommended and it is not even required by the patent office before the filing of application. U.S. Court of Appeals for the Federal Circuit, has even stated that the patent inventors do not hold any rights to conduct any prior art search.
Adding to this, the U.S. Patent and Trademark Office (USPTO) and the European Patent Office (EPO), both agrees for the fact that patentability search must be conducted, while 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 that may arise during the time of prosecution. These all can be corrected, thus creating more opportunities of receiving a patent without any delay.
- Self-Conducted approach: No law states that this search has to be performed by only any professional searcher or attorney. It can be self-conducted depending on the applicant’s understanding level and skills related to the technology used.
Even after it’s a self-conducted approach, it is still better to take help or advice from an experienced patent search professional.
Post-Filing of Patent
Once the filing is done, USPTO starts its official examination process with the searching phase. It is difficult to perform patent searching by a beginner since it requires a lot of skills and experience to find the right details from the right place. The European Patent Office believes that it requires a deep insight and eyes for details (EOT) to interpret the results, something neither the inventor nor a patent searcher is able to do.
Thus, it is recommended to take help from an experienced patent attorney.
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