Novelty Searches
Overview
Novelty searches are important to determine the scope of patentability of your invention. The difference between a properly conducted novelty search and a a mediocre search may make all the difference in the world to your business.
Classification Manual
Long before the advent of computers, the U.S. Patent Office devised a system of classiying patents into "shoes" . . . literally. Patents were placed into over-sized shoe boxes based on the type of invention. Examiners at the Patent Office would know which shoe box to look in to determine if a patent application contained novel features.
The system still persists today. On the front of every issued U.S. Patent is one or more class and subclass that the patent has been classified in. Though today the system resides largely in electronic databases, the method of search cannot be beat. Once one or more classes and subclasses can be located, an experienced searcher can riffle through the prior art and locate the most relevant references.
A very small section of the classification manual can be seen to the right of this text. The manual is published and updated frequently by the patent office. New classes and subclasses are added as needed and old ones are sometimes merged.
Keyword Searching
Keyword searches can aid in a novelty search, however, a keyword search alone, no matter how good the database, should not be relied on by itself. Unfortunetely, many attorneys today only conduct kewyord saerches and may even be unfamiliar with the classification system which may be complex, but is vital to ensure novelty. In order to ensure high quality results, a classification search should be conducted. Keyword searching may aid in narrowing down the patents found in a classification or as an initial entry point into a search, but one would be at a serious disadvantage to rely on a keyword search alone when the person examining your patent application will see all references in the same type of class and subclass.
Is a Novelty Search Really Necessary?
In almost all cases, yes. A novelty search helps deterimine:
a) The scope of patentability of your invention
b) What your competition is doing
c) Is it worth filing a patent at all, given the scope of patentability likely
d) Can you develop a workaround now, before fully developing and marketing your concept to ensure profitability in the future.
e) Results will be printed on your patent and serve as prima facae evidence that your invention is novel over these references.
A novelty search is really an insurance policy. In most cases, a search will yield positive results. However, even then, the question is, "How positive?" Can I claim the orange, or am I limited to claiming the rind? Maybe you wanted to claim the orange, but after a novelty search, it is determined that you should be thinking bigger. Claim the orchard! You would be selling yourself short to go without the novelty search.
