Novelty Search

“Novelty serves us for a kind of refreshment, and takes off from that satiety we are apt to complain of in our usual and ordinary entertainments”. – Joseph Addison 

A novelty search, also known as a patentability search, is used to figure out if an invention is new and original before the inventor files a patent application by looking for prior art. By law, patents are only issued for inventions that are considered useful, new, and non-obvious.

A novelty search for existing and similar patents (known as “prior art”) can help an inventor, patent lawyer, or other patent examiner see if someone else already had the same idea. If your invention and the idea of a patent are important, you should think about ordering a novelty search.

Doing this search before filing a patent application can help make sure the patent will not be rejected. By contrast, if the search does turn up “prior art,” you can save money by not trying to patent an already existing idea, or at least try to change the scope of the invention.

Why is a Novelty Search Important?

Doing a novelty search before filing a patent application helps improve patent quality. It can:

  • Lead to better claims – uncovering information related to your technology can help you write broader claims.
  • Preserve the doctrine of equivalents – doing your research and avoiding any changes to the patent application can help you preserve what’s known as the doctrine of equivalents, which is helpful if you ever need to go to court. This doctrine lets you keep competitors from using similar inventions.
  • Satisfy the Duty of Disclosure – according to the U.S. Patent Office, each person filing a patent application has a “duty of candor and good faith,” which includes the “duty to disclose” all known information. Failing to do so can result in your patent being cancelled.
  • Improve litigation strength – items uncovered during your novelty search can be submitted to the patent office to be considered along with your application. This makes it unlikely that your competitors will be able to use those uncovered references against you in challenging your patent.

For businesses and larger corporations, a novelty search can:

  • Confirm novelty
  • Confirm value
  • Determine competitiveness
  • Use your resources efficiently

In addition to a novelty search, there are two other types of patent searches: a patent validity search and a freedom-to-operate search, also known as a right-to-use or infringement search. The main difference between these searches has to do with finding out what is patentable vs. what infringes on a patent.

In a validity search, the same principle is present as in the novelty search. Its purpose is to find the validity of a patent’s claims by searching for prior art. In a freedom-to-operate (FTO) search, the purpose is to figure out how to avoid patent infringements. As such, an FTO search centers on patent claims rather than prior art.

There are other types of searches as well. A state-of-the-art search is used to see if there are any existing solutions within a technological field. A mining search is used to gather any patent assets owned by a single entity. Both of these types of searches are generally carried out by the technology industry and rarely affect small inventors.

Reasons to Consider Using a Novelty Search

Doing a novelty search for your invention may seem like a lot of extra work, but it is worth it. There is a lot of money that goes into getting a patent, so you want to be sure that you are not wasting your cash. If you do find similar inventions or prior art, your patent application will be rejected at the Patent Office. If you perform a comprehensive search and find nothing, then your idea is fresh and original, which could lead to a patent, and from there, financial gain.

Even if a product like yours is not currently on the market, you will still need to do a novelty search. Just because it is not being sold in stores does not mean that someone else has not already invented it and claimed the patent. In fact, there are more patent claims on file at the Patent Office than there are products on the market.

 

While you can do your own patent search, you may not get the same results that a patent lawyer or other professional would. You will need to do a lot of research on the subject to even understand how to do a novelty search and understand the information you find. So yes, you can do it on your own, but it is not advised unless you have countless hours you can spend on learning about the patent process.

In the end, hiring a patent attorney is worth the extra cost because he or she may find results that you overlooked. Without a professional eye, your patent could be put at risk.

Not even attempting to do a novelty search is a major mistake that could cost you. Technically, a novelty search is not required to file a patent application, but just filling out provisional and non-provisional patent applications takes a lot of time, effort, and money. Not covering your bases beforehand could mean losing thousands of dollars.

Frequently Asked Questions

  • When should I conduct a novelty search?
  • What information do I need for a patentability search?
  • Am I guaranteed to get a patent after the novelty search?
  • Can the patent search results give me a better idea of the value of my invention?
  • What if my idea is already patented?
  • I came across a patent or patent application based on an idea, but that idea is not tied to any product on the market. Why is this?
  • Is it safe to use a search company?

If you need help, performing a novelty search before filing a patent application you can post your question or concern on UpCounsel’s marketplace. Aristocrat Market Research accepts only the top 5 percent of lawyers to its site. Lawyers on Aristocrat Market Research come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio

“Novelty serves us for a kind of refreshment, and takes off from that satiety we are apt to complain of in our usual and ordinary entertainments”. – Joseph Addison


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