Getting a patent for an invention requires meeting eligibility standards and bot obvious before filing with the trademark office. Conducting a novelty search helps determine whether the invention is novel. A search tries to discover patent documentation to disclose the novelty to determine whether the invention is not obvious.
There’s a possibility of uncovering similar references that become the basis to determine obviousness. To determine whether the presence of prior art documents renders your invention obvious depends on the examiner who handles your patent application. A novelty search checks through prior art to determine the obviousness of an invention. Prior art includes current information in any public domain regarding existing technology that might cause a rejection of your patent application.
Understanding whether a novelty search is necessary
A novelty search reveals documents regarding prior art such as similar descriptions at the point of novelty of your proposed invention. The patent search saves money when applying. Revealing prior art inspires modifying a current idea or to consider another invention. Apart from saving you from spending on preparation and filing a patent application, you avoid patent prosecution while saving energy, money, and time.
It allows diverting the energy, money, and time to build and market a new invention. A novelty search offers insight into current technology regarding an invention. It comes in handy when drafting a patent application with an understanding of what to focus on. This encourages focusing on developing unique attributes of the invention to increase the chances of getting the patent. When planning a search, you have to choose between outsourcing a novelty search service or a DIY search.
Professional versus DIY novelty search
DIY novelty search
This type of search is usually a generic version involving searching online using a search engine such as Google. The search is likely to give you millions of results including irrelevant information. Sifting through the hordes of results takes a lot of time and effort to find relevant information. It is a good idea to do this type of search before enlisting a professional service. There’s a possibility of discovering information that prohibits an invention from getting a patent. It becomes easier to avoid wasting money and effort
When a DIY search fails to discover anything relevant, it is time to enlist the services of a professional patent attorney. This will allow a more comprehensive search to distinguish an invention from another including functional features, structural features, and processes. A professional novelty search determines various class combinations of an invention to produce more precise results. Conducting this text-based search is according to appropriate classes and subclasses to give more relevant results.
Professional novelty search
Enlisting a professional patent service allows getting highly reliable information. This allows making informed decisions regarding filing a patent, spending money and time to launch the invention. However, this search is not appropriate enough to guarantee that you get a patent (https://www.bloomberg.com/news/articles/2021-07-06/huawei-takes-patents-brawl-with-verizon-to-a-texas-jury) for your invention despite not discovering relevant references disclosing the invention’s point of novelty. There are more than 450 classes and 1000 subclasses for categorizing documents.
There’s a chance that some class or subclass combinations regarding the invention are inadvertently ignored in the search. Additionally, there’s a chance that some searchable references are classified incorrectly. Even with appropriate searching and identification of class/subclass categories, there’s still a chance of failing to yield relevant prior documents because of using different phrases and descriptive terms.
Does a professional novelty search guarantee a patent?
Conducting a professional novelty search and not discovering prior art references doesn’t guarantee to get a patent. Failure to discover any references disclosing a point of novelty will require an experienced patent attorney to give you his opinion regarding novelty. This opinion includes a likelihood of getting a patent after filing a patent application and satisfying other requirements.
Keep in mind that getting a positive opinion regarding the patentability of the invention (https://www.usf.edu/research-innovation/news/2021/usf-inventors-post-record-patent-numbers-ranking-top-10.aspx) has about a 70 percent chance of getting the patent. The trademark office has about a 30 percent chance of uncovering more relevant references that your search might have missed prohibiting granting the patent. It is very important to understand that a professional novelty search that fails to uncover any references only increases the chances of getting the contract.
Limitations to a professional novelty search
After conducting a professional novelty search and not discovering prior art references, the patent examiner might still declare your invention not novel. This might result from initial claims close to the point of novelty of prior art. A patent attorney might design the claims strategically but broadly to expect initial rejection. However, it is possible to narrow the claims afterward to secure a patent.
When planning to conduct a novelty search, you have to weigh your options regarding whether to enlist a professional service or do it yourself. Doing a simple search on your own in the initial stage helps but a professional patent search is the way to go.