6. Patentability search or Novelty search

6. Patentability search or Novelty search

Table of Contents

The Purpose of this article is to help you understand:

  • How do I know if my idea or invention has novelty (newness) ?
  • How a novelty search is conducted ? what to expect in it?
  • Advantages of novelty search in saving money and while drafting patent application
  • The results or opinion after novelty search
  • Who take novelty search and who skip it, what should you be doing ? 
Patentability search

Checking if your invention is novel by Novelty Search / Patentability search (this is an optional step)

Definition of invention is as per Section 2(1)(j) “invention” means a new product or process involving an inventive step and capable of industrial application;

and as per Section 2(1)(l) “new invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art;

our invention need to qualify the first requirement of patentability that is Novelty (also called newness),  An invention is said to be novel if all elements of a claim of the invention are not anticipated by a single prior art that is published, or used, or known to the public.

How do I know if my idea or invention has novelty (newness)

 an invention is said to be novel, when at-least some aspect of the invention is new and not known to public. In other words, the entire invention may not be novel but at least some aspect of the invention need to be novel and is not known to public or part of state of the art.

For example : Let’s assume our invention has 4 elements A,B,C and D.  hence to be able to qualify for novelty criteria of patentability at least some part of our invention need to be novel and not in public domain or not part of prior arts. lets say A,B,C element are already known to public and element D is novel.

Then, the question here is how would we know which part of our invention is novel (new) and which part is already known to public (that is part of prior arts)? this is found out by doing a comprehensive search in the domain of our invention. this is called novelty search. and it’s purpose it to find out if our invention has novel feature and to find out closes possible prior arts so that we can differentiate our invention while writing patent application and focusing our entire patent application on novel (new) and non obvious part (that is inventive step).

How a Patentability or Novelty search is conducted ?

This would be a comprehensive search performed by patent practitioners to find out patentability of your innovative idea. Similar to the brief preliminary search that we have performed in the idea incubation phase, this search also have the objective to find out the closest possible prior art related to our invention.

but unlike our brief search the patent practitioner goes into most comprehensive and detailed search as possible. The novelty search or patentability search involves

  • advance keyword search tactics
  • classification search
  • search by company name or assignee
  • combination of different strategies in a single search query
  • searching forward and backward referenced of a good prior art
  • search in different patent databases
  • Patent applications that are published
  • Patents that are granted
  • non-patent literature like articles blogs websites
  • IEEE papers and non patent literature search
  • products and services available in market
  • and other relevant the platforms in the domain of your invention

and it takes about 4-6 days for a patent professional to do a comprehensive patentability search and create a Patentability search report.

In the report the results of this patentability search are closely analysed and map against the elements of our invention. It is important responsibility of inventor to help patent attorney to identify how our invention is different and or improved from the results that are cited in the patentability search report.

Ideal case would be some aspect of our invention is are solving a long standing problem that the prior art patents failed to solve. This would prove a strong evidence to prove non obviousness of our invention.

Opinion on Novelty or patentability

Based on the result on patentability search patent attorney give an opinion about the novelty or  patentability of your innovative idea (invention):

Negative opinion:

If there are results in patentability search report which are similar to your invention and there is no novelty in your innovative idea compared to existing knowledge. That is the innovative idea is already known to public and there is no novelty. then a patent agent or attorney might advise you not to go for patent filing as your innovative idea is lacking novelty. This will save you a lot of time and costs that you otherwise would be incurring on filing patent application for an idea which would not result in granted patent.

Neutral opinion:

in this case the patent agent / attorney is of opinion that your invention stands a fair chance of winning patent for some aspects of your invention which are found to be novel and having inventive step based on results in patentability search. You may receive some objections from patent office yet by responding to it you may get patent for your invention.

Positive opinion:

this is when your invention has some features that are novel and non obvious that is seems to be having inventive step when compared with existing knowledge and prior arts found in the patentability report. This is a positive sign and patent agent or attorney might advise you to go ahead for patent filing.

Advantages of patentability search

  • Patentability search help us in identifying the closest possible prior arts which are likely to be found by examiner at the examination stage of the patent application. Hence considering these prior art before writing patent application increase chances of getting patent granted.
  • The identified prior arts are mentioned in the references and our invention is established as solution to long standing problem which is not yet solved. such an approach creates good chances of proving inventive step that is the solution our invention has provided was not obvious to a person skilled in the art as the problem is existed for so long. Hence it is useful in proving novelty and inventive step which improves chances of getting patent granted for our invention.
  • And ultimately patentability search also saves lot of unnecessary costs, efforts and procedures in filing the patent application for invention which doesn’t stand a chance of surviving patentability criteria and would be rejected anyway.

Who takes novelty search and who do not take novelty search and directly go to patent filing

If you are of thinking that, before going for entire patent process and all the costs involved in filing patent application I want to know

  • If my invention is novel or not?
  • Am I the first in the world to invent this ? or
  • someone already came up with such invention ?
  • and if my invention going to face any challenge moving ahead in examination stage due to lack of novelty ?

To know these answer we need to conduct the novelty search and as explained above it has different benefits like :

  1. saving money by avoiding patent process for invention which do not have novelty and
  2. informed drafting and clarity about inventive feature when compared with prior arts. 

however, some of the situations are such that you may skip novelty search and directly go for patent drafting and filing step. those situations would be,

  • You are an entrepreneur and you are soon going to launch your product or service in the market  any which ways, then you may think that I am going to launch my product or service, rather than investing in novelty search, I will go for patent filing directly and enjoy the benefits of patent pending status. or patent applied status. (hence skip taking novelty search)
  • Another case may be when you are a student or from educational institute and having short budget for patenting your project or research then you may wish to skip novelty search and invest same money for the patent filing directly.

Conclusion :

  • although an optional step, conducting novelty search is a recommended step and it has various benefits like saving money by avoiding patent process for invention which do not have novelty and helping in  informed drafting.
  • depending up on your situation it is sometimes cost effective to not go for novelty search and go directly for patent filing for your invention
  • best thing would be to discuss with an experienced patent agent or attorney and then take decision.

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Prasad Karhad
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