For a business to be innovative is not enough: a brilliant invention without a patent is a “kick me” sign to your competitors. Securing patents for your inventions is one of the best ways to protect what you have worked so hard to develop. But before you file a patent application it’s essential to search the prior art, to ensure your invention is novel and not already patented or published.
What Is Prior Art?
Prior art refers to publicly available information that could invalidate a patent application. You could think of it as the “recorded history” of the idea. Prior art may include patents, published patent applications, journal articles, conference papers, trade publications, and any other publicly available information related to the invention. Conducting a thorough prior art search is essential to determine whether an invention is novel and non-obvious.
Why Conduct a Prior Art Search?
A prior art search helps inventors and businesses identify potential obstacles to patentability, such as prior art that could be used to reject the patent application. By conducting a prior art search, you can:
- Evaluate the strength of your invention’s patentability.
- Mitigate possibility of infringing on existing patents.
- Enhance the value of your patent application.
How We Guide You through a Prior Art Search
There are several steps in a prior art search. These include:
Step 1: Define the Scope of the Search
Before conducting a prior art search, we discuss your invention and define its design constraints. It also includes determining the keywords, concepts, and subject matter related to your invention.
Step 2: Conduct the Novelty Search
After defining the design constraints, we use various online patent databases, search engines, and other resources to conduct a class-subclass search. We typically uncover 5 to 12 relevant references which either describe your invention or is similar to your invention.
Step 3: Analyze the Results
After conducting the novelty search, we analyze the uncovered prior art references and provide an analysis to determine if any relevant prior art references could be used to reject your patent application.
Yes. The payment needs to be made up-front, before the search is conducted. A novelty search is very time-consuming.
Typically, scheduling the search into our workload will take about 2 to 3 weeks, but you can expect the search results in about 10 calendar days. For an additional charge you can have it expedited.
After we complete the novelty search, we will send you a list of 5 to 12 references related to your invention. In that list we will pinpoint areas that disclose similar or identical aspects of your invention. In other words, we will tell you how unique the USPTO will consider your invention to be.
After you review the search results, we will discuss the references and cover any questions you may have about the search results.
If the novelty search doesn’t knock you out of the process, the next step is the patent application.
A novelty search does not guarantee that you will get a patent. The whole point is to give you a better sense of the likelihood.
The point of a novelty search is to find prior art references that could be used to reject your patent application. The novelty search process isn’t perfect, but in most cases it is critical because finding a prior art reference that turns up an identical invention means your patent is a no-go. It’s better to know that sooner rather than later. You do not want to go through R&D, possibly production and marketing, and a patent application only to realize that you won’t be able to make money from your invention. The silver lining is that you can save time and money for the next project.
No. A novelty search addresses only one question: “CAN I get a patent on my invention?” A novelty search is not a clearance search.
Rather, you are looking for freedom-to-operate search. A freedom-to-operate search can be conducted at different levels.
An extensive freedom-to-operate search would look at all patents within the appropriate class and subclass of patents related to your idea. However, this would be prohibitively expensive because of the time needed to read and review each of the patents.
A freedom-to-operate-search could include a search for claims that cover your idea.
In contrast to the above searches, a novelty search is a search for patents and pre-grant publications that disclose your idea. The focus isn’t on the claims.