Johnson & Phung LLCFree Consultation

Summary Of A Patent Novelty Search

By Thomas Phung
Thomas has been a member of the Johnson & Phung law firm since 2000 and practices in the area of intellectual property, including trademarks, copyrights, and patent prosecution.

A patentable novelty search (sometimes called patentability evaluation search) is for the sole purpose of determining your chances of obtaining a patent on your invention. A patent search may reveal that you cannot get a patent but even a favorable patent search will not guarantee that you can obtain a patent.

The search is conducted in the search files in the Public Search Room and/ or the electronic database of the United States Patent Office. Unless otherwise requested the search is usually limited to one or two search classes. As part of the search a Patent Office examiner, who is familiar with your type of invention, is usually consulted for the purposes of helping identify the most appropriate search classes. The search usually will not uncover all the prior art patents that are relevant to your invention but only those patents that the searcher believes are representative of what is the closest prior art.

Since the search is conducted by examining stacks of patents in open search files it is possible that more meaningful patents may be overlooked. Also, patent copies in the Patent Office search files may be missing since the Patent Office does not continually check on whether the search file is complete. Therefore you should consider a patentable novelty search only as a screening technique to give you a preliminary indication of the patentability of your invention as there are no assurances that all the relevant prior art patents have been uncovered.

Although a search may not reveal all the pertinent prior art patents we have generally found that if the search results are promising, then the chances are usually fairly good that a patent can be obtained. On the other hand if the patent search uncovers patents very similar or identical to your invention you will know that you cannot obtain a patent on your invention and thus save the costs to file a patent application.  You should also keep in mind that a patentable novelty search does not determine if your invention infringes someone else’s patent.  An infringement search is quite different, more complex and much more costly.

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