Importance and Procedure of Conducting a Novelty Search

Introduction

In the realm of obtaining a patent right, conducting a ‘novelty search’ stands as a crucial step for patent applicants or inventors seeking to secure patents. This ‘preliminary investigation stage’ is also known as a ‘patentability search’, that serves a pivotal role in determining whether an invention meets one of the primary and stringent criteria required for patent protection.

“A patent is an exclusive right awarded to an inventor to prevent others from making, selling, distributing, importing or using their invention without license or authorisation for a fixed period of time”. The patentability of an invention is based upon mainly four criteria’s–

1. Novelty
2. Non-obviousness

• Industrial Application/Utility

1. It should not be subject to Section 3 and 4 of Patents Act,1970

As discussed above, patents are issued only for those inventions that are ‘useful’, ‘non-obvious’ and most importantly- “NEW”. In order to file you patent application one will have to check for ‘prior art’.

PRIOR ART

Prior art encompasses a wide array of publicly available knowledge, disclosures, and technologies that “existed before the present patent applicant”, which may be relevant to the invention’s novelty and inventiveness. The prior art is conducted during the R&D stage of an invention. A prior art search includes an insight over-

• Patents and Patent Applications: that includes both granted patents and pending patent applications worldwide
• Publicly Accessible Knowledge: Any information that is accessible to the public, including product manuals, scientific papers, technical journals, conference proceedings, books, demonstrations, and public use instances.
• Existing products– that embodies similar inventions which has already been granted protection or is in the stage of getting one.

The primary aim of prior art search is to uncover any information that might be similar or that can be anticipated with ‘features of the present invention-/application’. This ‘basic search’ forms the base for assessing whether the invention meets the novelty and non-obviousness requirements necessary for patentability.

Why Novelty Search?

Novelty search helps an applicant to ‘assess the status of his patent applications’ chances of getting approved/granted patent protection. It can help in improving ‘patent quality’ in the following ways-

• Assess Patentability– A novelty search helps determine if an invention is new and is non -obvious, the two key requirements for patentability.
• Avoiding Infringement– By identifying existing patented product or process patents, applicant can avoid potential future infringement issues.
• Strategize Patent Filings– Understanding the existing landscape allows inventors to draft more robust and better patent claims by discovering information that is relevant to your patent application and can focus on the novelty point to increase the chances of getting a patent. It helps in identifying keywords mentioned under the prior arts and ensure that no important keywords and prior art is missed during the search.
• Speeds up Patent Filing– Novelty search aids an inventor to analyse the prior art filing thereby helping them in understanding what to claim and what not to claim in their patent application.
• Saves Costs– Identifying potential issues in the initial stages can save significant costs associated with filing, prosecution, and litigation of patents.

 Where and How to Do Novelty Search

The goal of novelty search is to ensure that your invention gets a patent protection and for the same identifying any such existing prior invention, that could be hindrance for the registration of your patent application. Thus, during the search, one should try to cover a wide range of ‘keywords search, classification-based search, citation-based search, product searching, assignee and inventor-based search or even White space Analysis ideas to delve deep into a specific field’ and to get a clear picture on what knowledge/product/process exists which is similar to your patent application.

One can and one should conduct a patentability search through various search engines such as Indian Patent Office Database, WIPO Patent scope, USPTO Database, EPO Espanet and Google Patents among others.

Conclusion

Thus, novelty search is a crucial step in the patenting process and by following a systematic approach and leveraging through the right tools and resources, inventors can increase their chances of securing a strong patent and safeguarding their innovations.

Author: Shreya Raman, , a student at RGSOIPL, IIT KHARAGPUR, in case of any queries please contact/write back to us via email to [email protected] or at IIPRD.

REFERENCES

1. Bastiaan Koster. (n.d.). Basics of Patent Searching. In WIPO Patent Drafting Course for Patent Agents from the ARIPO Member States and Observer States. WIPO. Retrieved June 28, 2024, from https://www.wipo.int/
2. Why Should You Conduct a Patent Search? (Bitlaw Guidance). (n.d.). https://www.bitlaw.com/guidance/patent/why-conduct-patent-search.html
3. FREQUENTLY ASKED QUESTIONS- PATENTS. (2020). In IP INDIA. Office of CGPDTM, INDIA 2020. Retrieved June 28, 2024, from https://www.ipindia.gov.in
4. (2023, September 2). What is a Patentability Search/Novelty Search/Patent Search? XLSCOUT. https://xlscout.ai/what-is-a-patentability-search-or-novelty-search
5. Admin, & Admin. (2023, December 22). State of Art Search And Prior Art Search Analysis. IIPRD |. https://www.iiprd.com/state-of-art-search-analysis/