Prior Art Searching to Gauge Patentability

You can only get a valid patent if your invention is truly “novel”, i.e. new.  Apart from being novel the invention must also be inventive, for a standard patent or at least innovative, for an innovation patent.

Without getting too far off track I’ll just point out that at present ACIP (i.e. the Advisory Council for Intellectual Property) is investigating whether or not the innovation patent system is working properly.  Depending on the outcome of their investigations It could be that the innovation patent system will be either abolished or altered so that the test for “innovative” step is changed to the same test for “inventive step” that applies to standard patents.

Anyway, getting back on point, if an invention is lacking in novelty it will also automatically be lacking in innovation or inventive step.  So the first question is “is the invention novel?”.

It’s a disturbing fact that although it’s possible to demonstrate that an invention  is lacking in novelty it’s pretty much impossible to prove that an invention is positively novel.  For example, let’s say that your invention is for a widget that has a combination of essential features xyzw.  You search the internet for three hours and lo and behold you find a website that describes a widget just like yours and clearly shows that the widget has features xyzw.  Well in that case you know, sadly, that your invention isn’t new and that there’s no point moving forward to having a patent application prepared.

On the other hand, let’s say that you search the Internet, the patent databases (e.g. the US Patent and Trademark Office Database, the European Patent Office database and the World Intellectual Property Office database) and you can’t find any document anywhere that describes a widget like yours with features xyzw.  You ring me up and we discuss the way that you’re searching.  I give you some tips (the subject of blog coming soon) and you go back and try some new strategies.  You still can’t find anything but you’re just not sure, you’re concerned that you mightn’t be searching correctly.  I suggest you get in touch with a professional searcher and you contact the searcher and engage the searcher for a professional search.   The searcher considers your invention and the features xyzw.  The searcher makes up a table of keywords, does some investigations and comes up with alternative keywords and relevant classes of the international patent classification the European patent classification and the US patent classification system.  The searcher applies the search strategy, i.e. the key words and the classifications to lots of different databases and gives you a CD-ROM containing about 200 documents which are the closest that the search document located.  Some of them have widgets with features xyz, some with xyw, some yzw or xzw but none of them describe a widget like yours, i.e. with all of features xyz and w.

Does the searcher’s report mean that your invention is really new?  Well, it gives you a pretty good level of confidence that it’s new.  After all, the search didn’t find a widget with features xyzw like yours has.  So we know that your invention is new over and above the search results.  What we don’t know for sure though is whether or not there is still a public document out there somewhere that the search strategy didn’t pick up.  There could be a number of reasons why that might happen.  One reason is that the words used in the document that were missed were unusual and didn’t match the keyword search strategy.  Another reason is that document that was missed might have been misclassified or the searcher might have not thought that the classification was relevant. Yet another reason is that the missed document might have been in Russian, or Korean or Japanese and although the search located it it the searcher or you didn’t realise that it was highly relevant and so it didn’t make it into the final 200 search results on the CD-ROM.

The fundamental issue is that searching isn’t a “crank the handle” process.  A lot of decisions have to be made to come up with a search strategy and different searchers exercise different judgements and make different decisions.  They make decisions about which keywords and classifications to include in the search strategy and which databases to search.  Consequently it’s very unlikely that any two searchers will produce two identical search strategies or search identical databases or present you with identical search results.

So, you see that it’s important to remember that favourable search results provide a level of comfort but not a 100% guarantee of novelty.







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