Novelty searches are important to determine the claimed scope or broadness of your patent application. The difference between a properly conducted novelty search and a a mediocre search may make all the difference in the world to your business.
Each law firm has it's own style concerning searches. However, at the Law Firm of Michael J. Feigin and Associates, we believe that searches should spell out for the methodology of the search, how it the search was conducted, what was located, AND information on how to read the references uncovered, while telling you, in writing, what we believe is patentable.
How we will search:
- the class and subclass of your patent at the patent office (see "Classification Manual" below)
- the most relevant patents in that class and subclass, as well as with matching keywords
What you'll receive:
- a detailed writeup of the technology searched, in plain english, based on what we believe a claim in your patent application will look like
- a list of references uncovered
- what features of your technology / invention are shown in these references uncovered, and what features are not
- our prediction as to what will likely happen at the patent office if we file your application based on the technology searched
(Remember: examination of a patent is a partially subjective process and other references, such as ones which have not yet been published can always pop up - so a novelty search will give you a pretty good idea of patentability, but there are no guarantees.)
Long before the advent of computers, the U.S. Patent Office devised a system of classifying 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 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. Unfortunately, many attorneys today only conduct keyword searches 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.
In almost all cases, yes. A novelty search helps determine:
a) The claimed scope of the patent for your invention / technology
b) What your competition is doing
c) Is it worth filing a patent at all, given the claim scope of your patent you are likely to obtain
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 facie 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.