A novelty search, or patentability search, is a search to determine if an invention is new. Since a patent will only be issued for inventions that are “new, useful, and non-obvious,” novelty searches are generally performed prior to preparing a patent application. However, some practitioners feel novelty searches are unneeded because patent examiners perform novelty searches as part of the patent examination process. So when should a novelty search be ordered? You should order a novelty search when the invention, or the quality of the issued patent, is important.
A novelty search improves patent quality in the following ways:
Better Claims – A novelty search uncovers what is already known about your technology, which allows you, or your attorney, to write the broadest claims possible. Or you could get it done by professionals – patent service InventHelp.
Preserving the Doctrine of Equivalents – Crafting the claims well, and avoiding amendments when the application in pending before the patent office, will help preserve the doctrine of equivalents for later use. The doctrine of equivalents lets you prevent your competitors from using inventions that are substantially similar to yours; broadening your claims to cover patents claiming similar features, as long as the features function in the same way, to produce the same result.
Satisfying the Duty of Disclosure – According to the patent office:
Your failure to adhere to the duty of disclosure can cause your patent to be invalidated. A novelty search, and subsequent submission of the references to the patent office, help ensure that you have satisfied your duty of disclosure.
Patents are presumed valid in light of information considered during the patent application process. Therefore, the references uncovered in your novelty search, submitted to the patent office, and considered by the examiner, will be extremely difficult for your opponents to use against you. Your patent will also better withstand any examination by potential partners or licensees.
From a business perspective, a novelty search provides the following benefits:
Confirmation of Novelty – A novelty search will help you determine what is novel about your invention, how your invention differs from existing inventions. The point(s) of novelty identified can be the basis of the unique selling proposition when you market the invention.
Confirmation of Value – A novelty search will give you information about the value of your invention. How crowded is the technology? The more work in an area the more valuable it’s likely to be. How large are the families of the patent references identified? The larger a patent family, the more money spent obtaining protection for the invention, and the more valuable the owners consider the patent.
Competitive Intelligence – A novelty search will let you determine who is competing in the area. The number of competitor patents, and their timing, will tell you the size of competing efforts – and whether they’re growing or shrinking.
Resource Efficiency – A novelty search lets you use your resources efficiently. A search will help you avoid wasting resources on weak inventions and it will save you time and expense during the patent application process.
For more information, or to request a quotation, please contact Invent Help.
