What a Novelty Search Does Not Do
In most cases, a novelty search will not answer the question of whether your concept or product is patentable. The one exception has to do with simple inventions. A patentability search might reveal that it would be difficult to get a broad utility patent for a simple concept.
Need a utility patent? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can help you get the right patents to add value and drive sales.
What a Patentability Search Actually Does
Generally, a novelty search will help address the potential scope of the claims for a utility patent. In other words, is it more likely that you will be able to pursue broader or narrower claims?
Ultimately, that question will be determined in back-and-forth rejections and responses with the particular examiner assigned to your patent application, but a novelty search can provide some preliminary guidance.
For example, if a patentability search for your concept yields prior art references that are quite similar to your invention, that might be helpful to know before investing thousadns of dollars in filing a utility patent application.
A Patentability Search Is Not an FTO Infringement Search
Keep in mind that a novelty search does not cover infringement. Therefore, a patentable invention is not necessarily safe from infringement. If you’re concerned about infringement, consider a freedom-to-operate (FTO) search.
A patentability search is not the same thing as an FTO search. Patentability searches do not provide any guidance on whether your product might infringe other patents. Just because your product might be patentable does not mean it would be free and clear of infringement risks.
It’s very possible to get a patent, and still have a patented product that would infringe on other patents. It helps to know the difference between patentable and infringing.
What Questions Might Get Answered
The main questions that might be answered by an effective patentability search include:
- If I were to file a utility nonprovisional patent application, what kind of claim scope should I realistically expect? A patentability search might hint at the possibility that your claims will have to be narrower than you prefer.
- How should the independent claims be initially written? For example, suppose your invention has three core features: A, B and C. Accordingly, there could be at least four different ways to draft combinations of those features: 1) AB, 2) BC, 3) AC and 4) ABC. If the search uncovered prior art that disclosed AB, for example, then you would not want to pursue a claim on AB alone.
Note that getting a utility patent is not so much a Yes/No question. Instead, it is a question of degree. What are your chances of getting a broader utility patent? Should you realistically expect narrower claims?
How Can an Invention Be Novel But Obvious?
Patentability searches are more effective at identifying novelty than nonobviousness because novelty is an objective black-and-white issue. In the above example, it would be fairly straightforward to determine if a single prior art reference disclosed all three features, i.e., ABC. The absence of such prior art might indicate that an ABC invention may be novel.
However, suppose that the search uncovered a first patent showing AB and a second patent showing C. The question then becomes whether it would be obvious to combine the two prior art patents to arrive at your invention of ABC.
No one other than the particular examiner assigned to your application can answer this question definitively. So, a patentability search cannot provide assurances, but may lead to relevant information on the issue of obviousness.
Prior Art Not Found Patentability Searches
It is not uncommon for USPTO examiners to locate prior art references that were not found in a prior patentability search. Experienced examiners are skilled at finding obscure prior art.
Furthermore, USPTO patent examiners often find and apply prior art references outside the field of your invention. They might use prior art references that were not even within the scope of your search.
Keep in mind that patentability searches are not guarantees. The question of “Is my invention patentable?” will seldom be answered by a patentability search.
Tempered with realistic expectations, a patentability search can provide practical guidance on whether to invest in a nonprovisional application, especially for a simpler invention.
Prior Art Searches
Currently, our firm can provide referrals for patent search vendors if you are considering a patentability search.
Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you get started in your journey to secure impactful utility patents.
