Proving Novelty and Non-Obviousness � Why Patent Search Costs Matter So Much in the Patent Application Process

The claims that patent applicants make in their applications are carefully worded statements. They intend to precisely describe/define their underlying inventions. From a patent applicant�s POV, the broader these claims, the more versions of the same basic invention they can cover.

Although making broad claims in patent applications makes it nearly impossible for a potential infringer to defeat the patent by making minor changes to the invention, it is also pretty risky. What if you make broad patent claims and someone finds a previous invention that falls under the patent�s scope?

  • Countless patents are at risk of being ruled invalid because the content they contain directly or indirectly matches with prior art references.
  • Almost�40%�of all allowed patent applications receive at best one final rejection.
  • If you find yourself in a patent infringement case, you may have to pay �reasonable royalty rates� and other unnecessary expenses.

So, how can patent applicants eliminate the risks of rejection? Let�s see what requirements patent applicants typically need to satisfy –

Statutory Subject Matter

The invention needs to be classifiable under these categories – a new-use invention, a composition of matter, an article of manufacture, a machine, or a process. Some inventions overlap these categories. As long as the invention falls under at least one of these categories, it can be sent for review to patent examiners.

Utility or Usefulness

Is the claimed invention currently useful or operable? If not, it may not satisfy this vital requirement that most patent agencies demand. For example, a device that violates the laws of physics will fail to meet this requirement.

Novelty

Demonstrating that your invention is novel means that the applicant should be able to verify that zero single prior art items describe all the significant elements of the invention. Inventions can be distinguished by –  

  • Physical Differences
  • Combinatorial Differences
  • New Uses

As long as the invention is physically different from prior art items and offers new uses, even new combinations of two different past inventions can satisfy novelty requirements. For example, if you use a World War II-era sonar receiver to create a pool alarm, it would pass the novelty test (new use) even though the invention uses the same electronics that were used in the past.

Non-Obviousness

This is the trickiest patent requirement that applicants must fulfill. If a skilled professional who is extremely familiar with advancements in the field of your invention considers your patent idea �obvious,� the application would fail the non-obviousness test.

For example, if you use lightweight fabrics to create new work pants, it�d be obvious to a professional skilled in the art of manufacturing clothes to try using lighter materials. Patent applicants must have a systematic approach to meeting these criteria. That�s where patent search services are so vital.

How to Address These Criteria?

A simple systematic approach to meeting these criteria consists of these basic steps �

  • Examine the invention for usefulness, obvious elements, and its physical uniqueness.
  • Assess all prior art references for their elements.
  • Compare the key elements of all prior art references to the elements in the invention.
  • If zero prior art references contain all the elements used in your invention, it can be deemed novel, useful, and non-obvious.

Although these four steps seem very easy, conducting detailed patent searches is not easy. There are broadly four different types of patent searches depending on the types of questions you need to answer.

  • State of the Art Search � A detailed survey of all the relevant/related documents published in a specific technical field/fields. Previous patents filed by specific applicants are also assessed. Searches are also made in conventional literature databases – scientific articles, instruction manuals, theses, dissertations, news media articles, etc.
  • Prior Art Search � Also known as �novelty� or �patentability� search, this type of search is conducted by the majority of patent offices across the globe. The objective of these searches is to determine whether the invention in the patent application is industrially applicable, inventive, and novel.
  • Freedom to Operate Search – FTO search is quite tricky and expensive. Patents are exclusionary rights (they give patent owners the right to stop others from taking advantage of the invention defined in the patent). The goal of the FTO search is to discover geographical areas where patent protection exists. The searchers then identify patent protection dates.
  • Opposition Search � The main objective of an opposition search is to create evidence-based arguments as to why a patent application should or should not be granted. If you don�t want a patent application to be granted, you should conduct this search to find prior art that the patent granting authorities may have discounted.

The Need for Conducting these Searches During the Patent Application Process

Undertaking�patent search costto verify the novelty of your inventions is the best thing that you can do as a patent applicant. The insightful knowledge applicants gain from such searches enable them to make strategic decisions about investing in new patent application projects.

There are now several patent-searching experts who help companies and inventors acquire protection for their inventions/patents. These experts use advanced tools to conduct detailed prior-art searches, FTO searches, state-of-the-art searches, and more. Examining the patentability of inventions before investing in expensive patent application processes is vital for all patent applicants!

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