Novelty of invention is a legal requirement for obtaining a patent in the UK, under the European Patent Convention and the Patent Co-operation Treaty. This article sets out how companies can avoid unnecessary R&D and legal fees at the pre-filing stage, by conducting a novelty search to ensure the invention is actually a new idea.
What is novelty in patent law?
The novelty requirement avoids the granting of patents for things which already exist in the public domain. In patent law, everything in the public domain is referred to as the ‘prior art’. It includes published research papers, newspaper articles, online blogs, public demonstrations anywhere in the world at any time. Novelty is generally considered to be a binary or absolute concept – something is either part of the prior art or it is not.
Why does the novelty requirement exist?
It would be counter-productive if a 20-year monopoly was granted for paper, which has existed for thousands of years, just because someone had the idea to file a patent application.
It also encourages innovation by rewarding inventors for disclosing new ideas, which has a wider benefit to society.
When should a patent search be conducted?
An inventor’s goal is to produce something new which addresses some problem or makes a certain process easier.
Before you set about developing your idea you should search for what already exists. This approach has three main advantages:
- It will save you and your company several man hours developing an idea which is already owned by another entity or has entered the public domain (following the expiry of their patent).
- Where patents exist for inventions which are similar to or related to your idea, you can think about how best to refine your invention. In other words, you will be well-placed to invent around the existing technologies.
- You might have an idea to improve a specific component or part of an existing product or process. If you obtain a patent for that component, then the owner of the earlier patent will likely approach you for a license to exploit your invention along with theirs.
If you are reading this after developing your main idea, you should conduct a search before filing for a patent and before hiring a patent solicitor.
Preparing for search
The wide use of hashtags (#) on social media platforms has increased society’s awareness of the importance of search optimisation. Unfortunately, the same cannot be said of the worldwide patent system. It is common for patent applications to fail because of a prior patent which used unusual language in its description or abstract. This means that the more search terms you have related to your patent the better chances you have of finding related inventions. Conversely, if your search terms are too narrow, then you will likely get a false sense that your proposed invention is novel.
Try to think of your invention from three different perspectives:
- Terms of art. These are the usual or common trade names for the invention. They often sound technical. For example, ‘automobile’ would be the jargon for ‘car’.
- Casual language. These are non-technical words used to describe your invention. Marketing and advertising campaigns for similar products are a good place to look for words which might not occur to you. For example, the words ‘spin’ and ‘freestanding’ appear in adverts for a washing machine.
- Literal language. The appearance or function of your invention might lend itself to a more literal description. Children, where accessible, are good at calling something for what it is. For example, a toddler might refer to a cutting-edge titanium alloy driver as a ‘putt putt’. Alternatively, ask someone with no knowledge of your invention to describe it.
If you have the time and budget, obtain translations for the list of words you compile (focusing on French, German and Chinese).
Where and how to search?
The following websites are relatively user-friendly and can be accessed for free:
Spend time searching for different permutations of the search words you have used, and take screenshots of the results. If your search returns too many results, narrow it by using and, ‘’ and other Boolean operators.
Maintain a research note of what you searched, when and where (search report). This will be helpful for any professional you later engage, and will avoid unnecessary duplication of work.
If your search reveals a previous invention which covers exactly what you were working on, congratulations! You have saved time and money on further development and filing/professional fees. You can now move on to your next project.
If your search has uncovered nothing which matches exactly your idea, it is time to engage a specialist intellectual property law firm. You should send them your search report, showing what terms you used and which databases you checked. This will give you the head start you need to quickly protect your idea and get your business off the ground.