By law, patents are issued and granted only for inventions that are useful, non-obvious and most importantly – NEW. As an inventor, the first step you must take before you file your patent application is to confirm that your invention is new and original. This process is known as a Novelty Search/ Patentability Search and is conducted before the inventor files a patent application by looking for prior art.

What is Prior-Art?

Prior art refers to existing and similar patents and includes all existing information (also the ones found in any public domain), whether published or pertaining to existing technology. A prior art information can be cited while rejecting a patent application.

By conducting a novelty search, you can ensure a patent application does not get rejected as it allows you to change the scope of the invention if the search does reveal prior art.

Why is Novelty Search/Patentability Search Critical?

Novelty Search helps improve patent quality and can prove to be critical in following ways:

• Better Claims – By uncovering information that is relevant to your technology, you are equipped to draft broader claims so that you can focus on the novelty points. This increases the likelihood of getting a patent.

• Preserving Doctrine of Equivalents – By doing your own research prior to filing a patent application, you are avoiding changes therein and hence preserving the doctrine of equivalents. This proves to be useful if you ever need to go to court as it forbids your inventors from using similar inventions.

• Duty of Disclosure – The U.S. Patent Office requires every applicant to disclose ‘duty of candor and good faith’, which also includes the ‘duty to disclose’ all known information. Failure to do so can lead to your patent being cancelled. A novelty search satisfies this disclosure.

• Build Litigation Strength – A lot of new items can be discovered during a novelty search, which can then be submitted along with the patent application. There are fewer chances of your competitors then using these uncovered references against you if your patent is ever challenged.

• Crucial for businesses and large corporations – Novelty search can prove to be beneficial for large corporations and businesses as it can confirm patent novelty/patent value, determine patent competitiveness as well as ensure resources are utilized effectively.

Common Mistakes in Novelty Search

Conducting a Novelty/Patentability Search is not mandatory, yet it could prove to be a grave mistake if not done in the right way. While the search can be performed on your own, it is not advisable as the outcome of the search might yield different results if not done correctly. It is advised to seek help from a patent attorney to ensure a professional eye is conducting the search to derive optimum results.

This is crucial in the case of patent litigation when an opponent challenges your patent validity in an effort to escape paying royalties. In this case if a prior art is found, which could be the result of not performing a novelty search properly, you lose not only potential income but patent rights as well!

Therefore, novelty search is a favourable option to protect your invention from the beginning.

Frequently Asked Questions (FAQs)

• When should we conduct Novelty Search?

Begin novelty/patentability search when you are in the early stages of the patent process and before you have finalised your patent application.

• What information is required for novelty search?

Your patent lawyer will need a detailed description of your invention, including drawings, photographs, figures, and any other relevant information. You also need to provide a patent application draft or a draft claim set and an invention disclosure form, if applicable.

• Will I be guaranteed a patent after the novelty search?

There are no guarantees even after you submit your patent application as even though novelty search ensures that no competitor inventions pop-up, there are always chances of a non-public prior art on record that can crop up. This is so as most U.S. patents aren’t made public for upto 18 months after the patent application is filed.

• What happens if my idea is already patented?

While it can be disheartening to discover that your idea is already patented, there’s little you can do thereon. The rights of filed patent are granted to the first person who filed the patent. However, in this situation you may be able to modify your invention in a way that it’s brand new, if possible.

• There are patents or patent applications based on an idea, however it is not tied to any product. Why is that?

There could be multiple factors why such a thing happens. Either:

1. The patent holder could not cover the product development cost.
2. The patent holder could not find a suitable trade channel.
3. The patent holder could not get consumer interest in the product.

It is crucial to remember here that a patent is not a guarantee of commercial success.

• Is it safe to use the services of search company?

A reputable search company will incorporate a standard practice of signing a non-disclosure agreement before dealing with any confidential information. With that in place, one can be assured of compliance.

-The Engineering and Editorial Team

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