Patents are issued and granted by law only for useful, non-obvious, and, most importantly, unique inventions. The first step you must take as an inventor before filing your patent application is to verify that your invention is new and unique. This is known as a Novelty Search/Patentability Search, and it is carried out prior to the inventor filing a patent application by searching for prior art.
What is Prior-Art?
Prior art refers to existing and similar patents as well as all existing information (including that found in the public domain), whether published or relating to existing technology. When rejecting a patent application, prior art information can be cited.
A novelty search ensures that a patent application is not rejected by allowing you to alter the scope of the invention if the search reveals prior art.
Why is Novelty/Patentability Search so important?
Novelty Search aids in the improvement of patent quality and can be critical in the following ways:
- Better Claims: By revealing information pertinent to your technology, you will be able to draft broader claims that will allow you to focus on the novelty points. This increases the chances of obtaining a patent.
- Preserving the Doctrine of Equivalents: By conducting your own research prior to filing a patent application, you avoid changes to the application and thus preserve the doctrine of equivalents. This is useful if you ever have to go to court because it prohibits the inventors from using similar inventions.
- Duty of Disclosure: The United States Patent and Trademark Office requires all applicants to disclose the “duty of candor and good faith,” which includes the “duty to disclose” all known information. Failure to do so may result in the cancellation of your patent. This disclosure is satisfied by a novelty search.
- Increase Litigation Strength: During a novelty search, many new items can be discovered and submitted along with the patent application. If your patent is ever challenged, your competitors are less likely to use these references against you.
- Important for businesses and large corporations: Novelty searches are important for businesses and large corporations because they can affirm patent novelty/patent value, determine patent competitiveness, and ensure resources are used effectively.
Common Mistakes in Novelty Search
While conducting a novelty or patentability search is not required, it can be a costly mistake if not done correctly. While you can conduct the search on your own, it is not recommended because the results may differ if done incorrectly. It is recommended that you seek the assistance of a patent attorney to ensure that the search is conducted by a professional in order to obtain the best results.
This is critical in patent litigation when an opponent challenges the validity of your patent in order to avoid paying royalties. In this case, if prior art is discovered as a result of an improper novelty search, you lose not only potential income but also patent rights!
As a result, novelty search is a good way to protect your invention from the start.
Frequently Asked Questions (FAQs)
Q1. When should we perform a Novelty Search?
Begin your search for novelty/patentability while the patent process is still in its early stages. It should be done even before you have completed your patent application.
Q2. What data is required for a novelty search?
Your patent lawyer will require a detailed description of your invention, including drawings, figures, photographs, and any other relevant information. You must also submit a draft patent application or claim set, as well as an invention disclosure form, if applicable.
Q3. Will the novelty search guarantee me a patent?
Even after you submit your patent application, there are no guarantees because, while a novelty search makes sure that no competitor inventions appear, there is always the possibility of non-public prior art on record appearing. This is due to the fact that most US patents are not made public until up to 18 months after the patent application is filed.
Q4. What if my idea has already been patented?
While discovering that your idea has already been patented can be disheartening, there is little you can do about it. The rights are granted to the person who filed it first. However, if possible, you may be able to alter your invention so that it is completely new.
Q5. There are patents or patent applications based on ideas that are not related to any product. Why is this the case?
There could be a variety of reasons why this occurs. Either:
- The patent holder was unable to cover the costs of product development.
- The patent holder was unable to locate a suitable trade channel.
- The patent holder was unable to generate consumer interest in the product.
It is critical to remember that obtaining a patent does not guarantee commercial success.
Q6. Is it safe to utilize the services of a search firm?
A reputable search firm will incorporate the standard practice of signing a non-disclosure agreement before dealing with any confidential information. With that in place, compliance is guaranteed.
How does XLSCOUT assists in quality Novelty Searches?
XLSCOUT put the use of reinforcement learning to its AI-based Novelty Checker tool to get quality prior art search reports in just 10 minutes. The Novelty Checker uses reinforcement learning to filter the noise from the prior art by pulling up the relevant results on top of the list. To be precise, it assists in conducting a novelty search to help you ensure that your innovation is unique. By selecting a few relevant and non-relevant results, users can apply reinforcement learning to the result set. The system takes the user’s feedback and then learns from it. Then it re-ranks the results by bringing the quality results to the top and sending the noise to the bottom.
Without reinforcement learning, users go through hundreds of results manually. By applying reinforcement learning, users can skip going through the non-relevant results. Users can apply reinforcement multiple times to a result set according to their different requirements/ criteria. They can then view the Top-10 or Top-20 results for each criterion to perform an analysis for idea validation.
Users can quickly generate an automated novelty and patentability search report by selecting these Top-10 or 20 results. Search reports from Novelty Checker include a good list of results. In addition, key features of the invention are mapped with relevant text to facilitate quick decision making.