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Patent Guide: III. Novelty searches and patentability opinions

Once we have the consultation, then we're ready to conduct a "Novelty Search" or "Patentability Search." The purpose of the search is mainly to determine the following: Is your technology patentable, and if so, how broad? While one isn't required to conduct a Novelty Search, it is a good idea for reasons listed in this article on Novelty Searches. Searches all tell you what the state of the art is, and may help you further develop your own concept.

Excerpts from an actual Novelty Search, of the type conducted by this law firm, are below.

First we start with a cover sheet with your name and address, and all the usual "thank you"s, then we get into the heart of the matter. Page two typically looks something like this:

A plurality of balls, usable for a ball selector, is also described herein. Each ball of the plurality of balls comprises a generally spherical encasement with a hollow interior, human-readable indicia on said spherical encasement, and a radio frequency identification tag freely movable in its housing within the hollow interior and adapted to transmit data corresponding to the human-readable indicia. The radio frequency identification tag, in embodiments of the disclosed technology, is freely movable within said hollow interior and drops to the gravitational bottom of the hollow interior when the ball is stationary.

Then on page three, we'll tell you how we searched. Here's an example:

The Search was primarily conducted in U.S. Patent Class 379 directed towards telephone communications. More specifically, subclass 201 directed towards special services was searched, including 201.02 (service profile), 201.07 (called party), 201.08 (calling party), and 201.11 (anonymous party). In addition, Boolean searches of issued U.S. Patents were also used, as well as searches of patents cited by those references uncovered.

It's very important to find the class and subclass of the invention, to ensure we're finding the best references. We also do some keyword searches ("Boolean searches") and look at references cited by, and citing from patents we uncover. By searching in these three ways, one usually can weed out problems with the U.S. Patent Office classification scheme which is mostly of great help, but not perfect; and, of course, avoid problems where we might use one keyword, while another applicant used very different words to describe the same concept. No search will be perfect, but this will give us a fairly good idea of what to expect during examination of your patent application, and just as important, how to draft your claims to get around the references ("prior art") that we have uncovered.

We will then provide you with a list of patents found, and send you a PDF copy of each one, along with an analysis, such as follows:

DISCUSSION AND ANALYSIS As a prelude to the discussion, it is important to remind you what is patentable in the United States. In order to obtain a patent, the invention must be both novel and unobvious. An invention is novel if it has not been publicly disclosed in a single piece of prior art, such as in a patent, printed publication, or product sold on the market. An invention is unobvious if, at the time the invention is made, it is at least not near-immediately apparent to one having ordinary skill in the art.

Moving on to the results of the Search, the most relevant issued U.S. Patents appear to be:

U.S. Patent 7,020,256 assigned to Telcordia Technologies, Inc, teaching a method of obtaining dynamic telephone numbers and mapping such numbers to another telephone number. However, this reference does not disclose receiving an order request by a second party from a first party, or providing at least a part of an order request and the assigned phone number to a third party.

Once we've discussed some of the references uncovered, and what is different about your "technology searched" compared to these references, we're ready for our conclusion:

The Search covers issued U.S. patents only, and it has been noted that this invention has not been publicly disclosed. While I have exerted every effort to locate issued U.S. patents and other documents as close in scope to your invention as possible, during examination of a patent application for this invention the U.S. or foreign patent offices may locate further art materially relevant to the examination of your application. Given the often subjective nature of the Patent Office, there is no guarantee that a patent will ultimately be issued.

Having said the above, I anticipate a broad scope of patentability for your invention. Based on the uncovered results, and as is typical in the field of software patents and business methods, the U.S. Patent Office will likely issue an obviousness-type rejection for this patent application which we will have to overcome during prosecution of this application. Your invention appears to contain features which are both new and unobvious compared to the prior art.

After reviewing the enclosed patents and the Search Report, please contact me to discuss the results of this Search and the filing of a utility application at the U.S. Patent Office.

In short, typically the U.S. Patent Office issues at least one rejection (in 80%+ of all cases filed), but we'll let you know if we think you have a shot at overcoming the rejection.

Now let's move on to IV. The Parts of your Patent Application.

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