THE NOVELTY PATENT SEARCH JURISDICTION REPORT: US PATENTS
Paul J. Sutton Sutton Magidoff
Te novelty or patentability patent search is oſten taken for granted and its importance oſten misunderstood. Many inventors forgo a novelty search or perform themselves what they believe is an adequate investigation. Tis approach can provide a danger that may not be appreciated until it is too late. A variety of patent-related searches are available to intellectual
property attorneys and their clients. Tese include the state of the art search, the novelty search, the validity search, the infringement search, and the freedom to operate clearance search. Each serves a unique function and each provides information that can be quite valuable. Tis article will examine the novelty patent search. Why perform a novelty search? Tere are several answers that justify
its being done. Te novelty search helps with the decision on whether the costs associated with the filing of a patent application for the invention are justified. It may show whether the invention has been patented or disclosed by another party. It may narrow the extent of novelty of the invention. Its results
may serve to invalidate one or more other issued patents. It will assist the attorney in draſting and defining the scope of claims in a patent application, in order to broaden the claims without their scope being invalid based on prior art. Tese are but a few of the reasons to conduct a novelty search, and an
open and frank discussion of these issues between the attorney and client is important. Essential to patent searches is an invention disclosure prepared by
or for the inventor(s). Without an adequate invention disclosure, the attorney is hampered and will be unable to provide a meaningful opinion. An adequate invention disclosure will include a preliminary descriptive title of the invention, the names of all co-inventors known at the time, when and how the invention came about, a thorough description of the invention and how it is to be used, advantages of the invention over known prior art, and a description of known problem(s) sought to be overcome by the invention and how they are overcome. A patent attorney, or a retained third party private search firm, may
conduct the search. Such firms are quite skilled and they possess a superior familiarity with the US Patent and Trademark Office (USPTO) classification system. Clients oſten conduct their own online searches, using keywords and phrases, although the results of client searches leave much to be desired. Tey may, however, provide a starting point for a more meaningful search. I have found it invaluable to conduct searches personally, and these
oſten include a discussion with a USPTO examiner whose technical area of expertise coincides with the area that I am searching. Examiners
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“FAVOURABLE SEARCH RESULTS MUST BE VIEWED SOLELY IN THE CONTEXT OF THE ABSENCE OF UNFAVOURABLE RESULTS.”
may make available their own informal records. Tis highly valuable interaction with a patent examiner is not normally available to non- attorneys. Te search results most oſten will include the identity of US and
foreign patents, published patent applications, and other publications such as technical literature. Tese are screened for relevance, analysed in comparison to the invention disclosure, and a search report is generated. Tis report will include an opinion on whether the invention is patentable, and possibly the scope of patent protection available, although the opinion will not guarantee that a patent will be granted.
No result It is also essential to keep the following in mind: favourable search results must be viewed solely in the context of the absence of unfavourable results. A novel patentable invention and an inadequate novelty search will yield the same results—nothing was found. Te novelty search provides an attorney with the state of the relevant
art, and will oſten assist the preparer of patent applications with specification terminology and the available scope of protection. It does not, however, qualify as an infringement or freedom to operate search. Tese latter searches are specifically directed to unexpired patents
and published patent applications, the claims of which may cover the invention described in the invention disclosure. While unexpired patents may be uncovered during a novelty search and may be analysed, infringement decisions must be based upon the more rigorous types of searching. Whether to conduct a novelty search before incurring the cost of a
patent application is a decision that is up to the client. Te relatively small costs of a novelty search are a worthwhile investment when compared to the greater costs of the application. Failure to conduct a search may result in wasting money on the application.
Paul J. Sutton is a founding partner of IP boutique law firm Sutton Magidoff. He can be contacted at:
paul@suttonmagidoff.com
World Intellectual Property Review May/June 2015 89
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