Novelty Search: What is it?

A novelty search, also known as a patentability search, is used to figure out if an invention is new and original before the inventor files a patent application by looking for prior art. By law, patents are only issued for inventions that are considered useful, new, and non-obvious.

A novelty search for existing and similar patents (known as "prior art") can help an inventor, patent lawyer, or other patent examiner see if someone else already had the same idea. If your invention and the idea of a patent are important, you should think about ordering a novelty search.

Doing this search before filing a patent application can help make sure the patent won't be rejected. By contrast, if the search does turn up "prior art," you can save money by not trying to patent an already existing idea, or at least try to change the scope of the invention.

Why is a Novelty Search Important?

Doing a novelty search before filing a patent application helps improve patent quality. It can:

  • Lead to better claims – uncovering information related to your technology can help you write broader claims.
  • Preserve the doctrine of equivalents – doing your research and avoiding any changes to the patent application can help you preserve what's known as the doctrine of equivalents, which is helpful if you ever need to go to court. This doctrine lets you keep competitors from using similar inventions.
  • Satisfy the Duty of Disclosure – according to the U.S. Patent Office, each person filing a patent application has a "duty of candor and good faith," which includes the "duty to disclose" all known information. Failing to do so can result in your patent being cancelled.
  • Improve litigation strength – items uncovered during your novelty search can be submitted to the patent office to be considered along with your application. This makes it unlikely that your competitors will be able to use those uncovered references against you in challenging your patent.

For businesses and larger corporations, a novelty search can:

  • Confirm novelty
  • Confirm value
  • Determine competitiveness
  • Use your resources efficiently

In addition to a novelty search, there are two other types of patent searches: a patent validity search and a freedom-to-operate search, also known as a right-to-use or infringement search. The main difference between these searches has to do with finding out what is patentable vs. what infringes on a patent.

In a validity search, the same principle is present as in the novelty search. Its purpose is to find the validity of a patent's claims by searching for prior art. In a freedom-to-operate (FTO) search, the purpose is to figure out how to avoid patent infringements. As such, an FTO search centers around patent claims rather than prior art.

There are other types of searches as well. A state-of-the-art search is used to see if there are any existing solutions within a technological field. A mining search is used to gather any patent assets owned by a single entity. Both of these types of searches are generally carried out by the technology industry and rarely affect small inventors.

Reasons to Consider Using a Novelty Search

Doing a novelty search for your invention may seem like a lot of extra work, but it's worth it. There's a lot of money that goes into getting a patent, so you want to be sure that you're not wasting your cash. If you do find similar inventions or prior art, your patent application will be rejected at the Patent Office. If you perform a comprehensive search and find nothing, then your idea is fresh and original, which could lead to a patent, and from there, financial gain.

Even if a product like yours isn't currently on the market, you will still need to do a novelty search. Just because it isn't being sold in stores doesn't mean that someone else hasn't already invented it and claimed the patent. In fact, there are more patent claims on file at the Patent Office than there are products on the market.

Common Mistakes

Performing a novelty search before filing your patent application is never a mistake. The mistakes come in how you carry out that novelty search.

While you can do your own patent search, you may not get the same results that a patent lawyer or other professional would. You will need to do a lot of research on the subject to even understand how to do a novelty search and understand the information you find. So yes, you can do it on your own, but it isn't advised unless you have countless hours you can spend on learning about the patent process.

In the end, hiring a patent attorney is worth the extra cost because he or she may find results that you overlooked. Without a professional eye, your patent could be put at risk.

Not even attempting to do a novelty search is a major mistake that could cost you. Technically, a novelty search isn't required to file a patent application, but just filling out provisional and non-provisional patent applications takes a lot of time, effort, and money. Not covering your bases beforehand could mean losing thousands of dollars.

Frequently Asked Questions

  • When should I conduct a novelty search?

Perform your own novelty search or hire a lawyer to do it for you in the early stages of the patent process. At the latest, it should be done before finalizing your patent application.

  • What information do I need for a patentability search?

If you're hiring a patent lawyer to do the novelty search, you will need to supply a detailed description of the invention, including drawings, figures, and photographs, and any other relevant information. Also provide a draft patent application or draft claim set and, if applicable, a corporate invention disclosure form.

  • Am I guaranteed to get a patent after the novelty search?

No, there are no guarantees, even once you submit your patent application. Even if the novelty search doesn't turn up any competing inventions, there may still be non-public prior art on record that can keep you from getting a patent. This is because most U.S. patents aren't even made public for 18 months after the filed patent application date.

  • Can the patent search results give me a better idea of the value of my invention?

This is a difficult question to answer. For starters, the value of your patent lies in how much interest companies, customers, investors, and others may have in the product. The value also depends on the extent that you can stop competing inventors from copying the idea.

  • What if my idea is already patented?

It's disappointing to discover that your idea is already taken, but there's nothing you can do. Once a patent is filed and granted, the rights belong to the first person to file. In some cases, you may be able to modify your invention in such a way that it's brand new.

  • I came across a patent or patent application based on an idea, but that idea is not tied to any product on the market. Why is this?

There are multiple reasons why a patent idea isn't currently tied to a marketable product. Either:

  1. The patent owner didn't have enough money to develop the product
  2. The patent owner couldn't get the retail space or suitable channels for trade
  3. The patent owner couldn't get enough publicity or consumer interest in the product.

Remember, a patent is no guarantee of commercial success.

  • Is it safe to use a search company?

A patent search company's business depends upon them having a sound reputation in the field. It's standard practice to have any company or individual sign a non-disclosure agreement before giving them confidential information. With that precaution, there's little or no risk that an established company will try to steal your invention.

If you need help performing a novelty search before filing a patent application you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.