Is a Novelty Search Really Necessary?
A patent is a costly endeavor, costing tens of thousands of dollars. And that’s assuming everything goes as planned! Any bumps or roadblocks you encounter along the way will cost you more money and time. A novelty search ensures that you have a strong, patentable claim from the start.
What is Patentability?
To be granted a patent, your application must include patentable subject matter. The three patentability criteria are as follows:
- Non-obvious, and
An inventor submitting a patent application must address these criteria with sufficient written explanation and enablement. It is also necessary to be prepared to respond to all patent eligibility criteria-related patent office actions.
What is a Novelty Search?
A novelty search, also known as a prior art search or a patentability search, identifies related prior art to determine whether an idea meets the patentability criteria.
Top 3 Reasons to Conduct a Novelty Search
1. Shorten prosecution. Claims that are written with novelty and non-obviousness in mind from the start reduce prosecution time and ensure that the best prior art is created for the record. A thorough novelty search that includes an examination of pertinent and related prior art makes it simpler to draft an application that is more likely to pass the patent review process. Knowing the prior art allows you to predict the examiner’s rejections.
2. Position your IP. As an innovator or assignee, your top priorities should be securing intellectual property protection and ensuring that your patent will stand up to scrutiny if challenged. Create a valuable market position by focusing on the most patentable and marketable aspects of your idea in your claim. A novelty search can help you avoid discovering unforeseen references during patent prosecution or a future infringement case.
3. Analyze the landscape. The advantages of conducting a novelty search are identified long before you file for a patent. Identifying which of your concepts are novel also provides insight into the overall technology and competitive landscapes. Use the search results to identify and comprehend what your competitors are working on, areas of opportunity, and how your solution is superior to the state of the art.
When Should You Conduct a Novelty Search?
A novelty search should be completed at three stages of the innovation process to reap the full benefits.
1. Ideation: Conducting a novelty search early in the innovation process allows you to focus resources on viable ideas rather than wasting time or money on ideas that do not fulfill the patentability criteria.
2. Application: Search all relevant prior art before filing a patent claim. A fully written claim allows you to conduct a more thorough search.
3. Before filing SB/08: The USPTO requires inventors to list all “material,” or relevant, prior art in the SB/08 Information Disclosure Statement. A novelty search assists in identifying all prior art that are included. A comprehensive SB/08 tends to encourage the examiner to consider your citations and improve the prosecution history.
Novelty Search Resources
XLSCOUT put the use of reinforcement learning to its AI-based Novelty Checker patent search tool to get quality patent research 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 patentability search/patent research to help you ensure that your innovation is unique. By selecting a few relevant and non-relevant results, users can apply them to the result set. The system takes the user’s feedback and then learns from it. It uses conceptual searching and 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 this process, users can skip going through the non-relevant results. Reinforcement can also be applied multiple times to a result set according to users’ different requirements/criteria. Users can then view the Top-10 or Top-20 results for each criterion to perform a prior-art analysis for idea validation.
Users can quickly generate an automated novelty and patentability search report by selecting these Top-10 or 20 results. The Novelty Checker prior art search reports include a list of results along with relevant text mapping with the key features of the invention for enabling quick decision-making.