Novelty and Patentability Searching: Is There A Difference?

You may have noticed that patent practitioners use different terms to discuss prior art searching that occurs before patent grant. Some call it patentability searching and others call it novelty searching; the USPTO Fee Schedule simply refers to it as patent searching. As a practical matter, patentability and novelty searching are interchangeable names for all prior art searches before or during patent examination. Nevertheless, this brief discussion of basic concepts will help you to set the stage for effective prior art searching whether using outside search experts or doing the searching yourself.

Interchangeable Terms

The relationship of patentability and novelty is laid out in 35 U.S.C. §§ 102(a) and 103. Conditions for patentability include novelty and non-obvious subject matter. Thus, some practitioners consider novelty searches to be more narrowly focused on finding anticipatory art while patentability searches are broader and consider prior art relevant to both novelty and non-obvious subject matter.

The difference in scope between these two searches is very important, but the requirements of §§ 102 and 103 are based upon a claimed invention. In practice, most attorneys and agents obtain a patent search before drafting claims; the invention disclosure is typically in paragraph form. The drafter uses the patent search results as a step to drafting novel and non-obvious claims. At the USPTO, examiners clearly perform patentability and novelty searches for the content of the claims. On the other hand, the distinction between novelty and patentability searching is probably trivial when the patent search is performed before drafting claims.

So what should practitioners call patent searching that occurs before the claims are written? A review of recent documents reveals that the terms are generally used interchangeably to describe the same basic search. For instance, patents describe “patentability and novelty search” (US 9,472,361 B1 at column 1, lines 24-25), “patentability or novelty search” (US 8,731,219 B2 at column 1, lines 30-32), novelty search (US 9,084,769 B2 at column 3, lines 45-48), and patentability search (US 8,607,602 B2 at column 1, lines 45-50).

Here at Global Patent Solutions, our clients typically use novelty and patentability interchangeably when requesting prior art searches. Rather than relying upon a “named” search, our sophisticated clients work with the search team at GPS to ensure that search parameters are clear and that expectations are defined.

What Is The Best Disclosure Format?

Claims are the best disclosure format because the search boundaries are clearly laid out. National stage patent examiners only consider properly formatted claims for that exact reason. However, GPS generally receives invention disclosures presented in paragraph form with photographs. We have even seen inventions described on cocktail napkins! If you are purchasing patent search services, it is worth considering how you will provide the invention disclosure to Global Patent Solutions. Even if you are doing the search yourself, properly formatting the invention disclosure helps to organize a coherent and thorough search strategy.

It can be difficult to strike the balance between too much and too little information in the search disclosure. For example, the brevity of a single claim allows very efficient searching but fails to convey alternative embodiments or dependent features. On the other hand, the excessive details of a fully drafted specification produce irrelevant search results if those details don’t converge. 

Two basic pre-search activities can help you standardize the invention disclosure and achieve more efficient searching. First, identify the crux of the invention. Consider whether the novelty is represented by a single element, or whether the novelty depends upon a non-obvious arrangement of known elements. Summarize your thoughts in a single concise sentence about the crux of the invention.

Second, extract all the elements from your disclosure into a list. Are the listed elements relevant to the crux of the invention? The search should focus on truly relevant elements; move marginally relevant elements to the side. Conclude this activity with a bulleted list of relevant elements. 

These two small steps keep the search focused on the invention rather than wandering off into the background. In fact, GPS structures every search around the crux of the invention and the element list. GPS can perform a patent search on anything from a claim to a drawing to a rough outline or even a full spec—and if you also provide the crux of the invention and an element list, our analysts can spend more time doing what they do best: searching.

If you are trying to jumpstart a patentability or novelty search, the following three tips may guide you:

1. Write out a single concise statement describing the crux of the invention.

• Is the crux a single novel element, or
• Is the crux an arrangement of known element?
• Prepare a list of relevant elements.

• Are these elements related to the crux of the invention?
• Are these elements only marginally related to the crux of the invention?
• Include the crux of the invention and the list of elements with the invention disclosure to GPS.

We’re here if you need any help.