A novelty search or more popularly known as a patentability search is the very first and foremost search conducted to determine whether an invention or product or process is new and original. It is much better to learn about the novelty search basics before preceding further for the patent prosecution process.
What is a Novelty Search or Patentability Search?
A patentability search or a novelty search is done before an inventor files a patent application. This is done to find out if the invention is absolutely new, useful and non-obvious according to the Patent Law. Prior-arts help to determine the novelty of an invention.
A novelty search can be conducted by the inventor himself or by a patent professional or patent lawyer. The objective of this search is to find out if any existing similar patents (prior-art) have same idea to that of the invention. If you think you have an idea or invention that is strikingly important, you should definitely go ahead to find the novelty of it.
This search is conducted as it helps an inventor to confirm whether his invention will be accepted or rejected before applying for a patent application. Applying for patent after knowing that the search is a prior-art will only lead to loss of time and money.
Also Read: Patent Search Vs Freedom To Operate Search
What is the importance of a Novelty Search?
The quality of a patent can be improved to a greater level if a novelty search is done prior to filing of a patent application. The benefits are as follows:
- The scope of your claims can be widened once you come to know information relating to your technology through a novelty search.
- It helps to preserve the doctrine of equivalents (a legal method used by a patent owner to file an infringement claim even though the intended product is not identical to the infringing product).
- According to USPTO,” Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability.” If an applicant fails to comply with, it will lead to cancellation of the patent.
- Helps in improvement of litigation strength
Larger corporations and businesses are benefitted by novelty search in the following ways:
- Novelty Confirmation
- Value or usefulness confirmation
- Helps to determine competitiveness
- Proper use of resources
Reasons for considering a Novelty Search
A novelty search is truly a time consuming task but it’s totally worth it. The entire procedure for obtaining a patent is quite expensive so you will wish to end up wasting money unnecessarily. Your patent application will be rejected by the Patent Examiner at the Patent Office if he is able to trace similar inventions or prior-arts. Thus an extensive novelty search will save you from these hazards.
You may have developed a product which is unavailable in the market. You still need to go ahead and perform a novelty search. This is because somebody may have already invented it before you and claimed the patent despite the fact that the product is not live. The Patent Office holds more patent claims than available market products.
Well it is never a mistake to conduct a novelty search before applying for a patent application. But how you execute the search is definitely something upon which your end results will depend.
You can do the novelty search on your own but the results may not be the same as that when the search is done by an experienced patent professional. Novelty Search requires sound knowledge as to what is it, how to perform the search and understand the results you have obtained. So if you have endless time in hand, definitely you can try for it.
Taking help or hiring a patent professional is an expensive process but he/she might come out with results that you have overlooked. At the end, it’s the experience that matters.
Technically, a novelty search isn’t required to file a patent application. Mere filling out provisional and non-provisional patent applications is both time and money consuming. So, the foundation should be strong as rejection of a patent application costs huge.
Also Read: Things to do before Patenting Something
Frequently Asked Questions
When should you conduct a novelty search?
Do it at the early stages before applying for a patent application or while you are at a stage before finalizing the application. It is advisable to take the help of an experienced patent professional always.
What information do I need to provide?
If you opt for taking help of a patent professional, you will be required to supply a detailed description of the invention, drawings, figures, photographs, and other relevant information. It must also be accompanied by a draft patent application or draft claim set and a corporate invention disclosure form if required.
What if my invention as already patented?
It’s quite disheartening and there is nothing you can do at this scenario other than working with renewed vigour for a new invention. A patent right is always in favor of the first person who has filed the patent. In some cases, you can still modify your invention such that it appears completely new.
Will I definitely get a patent after the patent search?
No, there is no guarantee that you will win a patent just because you have conducted a novelty search. You may not be able to find any prior-art through a novelty search, but there may still be non-public prior art on record. This happens because U.S. patents aren’t even made public for 18 months after the patent application filing date.