The Difference Between Novelty and Patentability Searches
At Lambert Shortell & Connaughton, we conduct comprehensive patentability searches designed to answer the questions that matter before an inventor invests in a patent application. Rather than merely searching for an exact match to an invention (a “novelty search”), we conduct a complete analysis of if an invention is patentable, evaluating if the invention is new, non-obvious, and patent eligible. We then provide an attorney’s professional opinion regarding the invention’s patentability.
This approach is more useful than a basic novelty search, which generally addresses only whether a single earlier reference discloses the same invention.
A Complete Patentability Analysis
Patentability involves three principal requirements:
- The invention must be new (35 U.S.C. 102);
- The invention must be non-obvious (35 U.S.C. 103); and
- The invention must involve patent-eligible subject matter (35 U.S.C. 101).
A novelty search addresses only the first requirement. It generally looks for a single patent or publication containing all or substantially all of the invention’s important features. Finding no exact match may be encouraging, but it does not establish that the invention is patentable.
Our patentability searches evaluate all three requirements.
Non-Obviousness and Multiple References
An invention may be rejected as obvious even when no single prior-art reference discloses the complete invention. For example, one earlier patent may disclose most of the invention, while another discloses the remaining feature. A patent examiner may conclude that a person working in the field would have had a reason to combine those teachings, and thus the invention is obvious and not patentable.
A search limited to exact matches may overlook this issue. Our analysis considers whether multiple references could reasonably be combined and whether the differences between the prior art and the invention are likely to support patentability.
Patent Eligibility
Patent eligibility is a separate requirement that can be particularly important for software, artificial intelligence, business methods, diagnostic methods, and certain biotechnology-related inventions.
An invention may be both new and non-obvious but still face rejection if it is considered an abstract idea, law of nature, or natural phenomenon without sufficient additional inventive substance. Our patentability analysis considers this issue rather than assuming that novelty alone is enough.
A Broader Search of the Prior Art
Our searches are not limited to the United States Patent and Trademark Office database. Depending on the technology, we search U.S. patents and patent applications, foreign patent-office databases, international patent publications, and other relevant sources.
This broader scope matters because prior art affecting a U.S. patent application can come from anywhere in the world. Foreign patent documents, technical publications, product literature, websites, and other publicly available materials may all be relevant.
Novelty searches are often limited to the U.S. Patent Office database and may therefore provide an incomplete picture of the prior-art landscape.
Attorney Review and Professional Opinion
A list of similar patents is not the same as a patentability opinion. The references must be carefully compared with the invention, the important differences must be identified, and those differences must be evaluated under the legal standards for novelty, non-obviousness, and patent eligibility.
At Lambert Shortell & Connaughton, our patentability searches include this attorney analysis. We provide a professional opinion regarding whether the invention appears patentable and may also identify features to emphasize, potential obstacles, and opportunities to strengthen the patent position before filing.
No patent search can guarantee that every relevant reference will be located or that a patent will ultimately issue. However, a comprehensive patentability search provides inventors with a far more meaningful basis for deciding whether and how to proceed than a novelty search alone.