Novelty/Patentability Search

What is a Novelty Search?

•A novelty (patentability) search is performed to reveal prior art that can affect the patenting of an invention

Why perform a novelty search?• To help with the decision of applying for a patent which

requires time and money• To help with drafting the patent application

Points to remember:• Consider both patents and publications as prior art• Search all publicly accessible information

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Value of Novelty Searches

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• Hypothesis: A patent has a higher chance of grant if a comprehensive pre-filing search is performed

• Dataset and Assumptions:• Sample of 3000 randomly selected patent applications filed in December 2004 and January

2005 was analyzed. The applications with IDS indicate novelty search was performed• Conclusion

• Highest percentage of patented cases for applications where novelty search was performed, highest percentage of abandoned cases when search not performed

Data Source

Dolcera Novelty Search Process

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Understand the invention

Search in multiple databases

Generate report

Dolcera Objective: Ensure comprehensive

coverage at an affordable price point

Step 1:- Understand the Invention

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• Understand latest technology related to the invention from web searches, scientific literature, Wikipedia etc

• Identify Novelty, Problem/Solution from the invention disclosure document

• Understand “elements of the invention” that need to be protected and design searches accordingly

Step 2:- Search in Multiple Databases

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• Identify keywords, IPC, US, and CPC codes. Run a comprehensive search comprising the following steps:

• Google prior-art search• Use Google ‘prior-art search tool’ to identify both patent and non-patent prior-

art data• Keyword based patent search

• Run keyword searches in different patent databases such as Google Patents, Micropat, SIP and Thomson Innovation

• Class based patent search• Combine identified classifications with broad keywords to identify relevant

prior-art• Non-patent literature search

• Use keywords and citations to identify relevant prior-art from Google Scholar, IEEE search, Scirus

Step 3 :- Generate Report

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• Map the elements of the invention individually to the prior art results, and provide claim numbers/line numbers/section numbers for ease of reference

• Map figures from the invention against figures from prior art if feasible• Create an element comparison chart as shown below

• Publishing Format:• Publish entire report on an interactive wiki page• Publish a printable format of the wiki and annotated PDF of relevant

prior art (if required)

Elements of the invention Related/relevant context from prior art

Element 1 Paragraph from prior art

Element 2 Similar figure from prior art

Element …… ………………….

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Example - Novelty Search

Step 1: Understand the Invention

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• Consider an invention for “Automated web-based targeted advertising with quotas”

• The following problem/solution is proposed:• Problem:- There are limited opportunities for targeted advertising on websites

since advertisers specify ad quotas for the number of times their ads should be displayed.

• Solution/Novelty:- The present invention determines where to place advertisements to maximize an expected utility such as click through rates while operating within the constraint of quotas. The novel idea proposed includes a broad definition of utility, including measures of sales, profits, or brand awareness etc. to allow advertisements to be allocated in accordance with the actual interests of advertisers.

• Some elements of the invention are: • Selecting group of sites for displaying advertisements to maximize utility• Utility includes measures of sales, profits, brand awareness etc• Meet ad quotas specified by the advertisers while maximizing utility

Step 2.1: Build Concept Table (Keywords)

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Step 2.2: Determine Class Codes

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Step 2:- Search in Databases

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Google Scholar Search

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Micropat Search Example

Step 2:- Search in Databases

Step 3:- Generate Report

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Bibliographic table for patents with hyperlinks

Bibliographic table for scientific literature with hyperlinks

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Sample Element Mapping for Patents/Scientific Literature

Step 3:- Generate Report

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Main Report: Interactive media wiki page

Convenient Report Format

Additional annotated PDF’s for ease of reference

Quality Assurance: Multiple Databases + Mapping and

Analysis of Prior Art + Foreign Keywords (if required) +

Convenient Reporting Format

Better than Landon IP & Cardinal IP on

Quality Benchmarks

10 Years of experience

Hundreds of searches for top companies across the world

every month!Quick

Turnaround

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Try us out for quality before you decide! Order a free trial search!

Dolcera Proposition: Assured Quality and Affordable Pricing

Competitive Pricing and Discounts.Option for Bulk Pricing.

Competitive Pricing and Discounts.Option for Bulk Pricing.

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Thank You