Novelty Search

The importance of search to know the strength of your idea

Before filing a patent, a trademark or a design, it is important to search on specialized databases to assess whether the sought protection is actually new and original.

Searches on databases are important in other phases of life of an enterprise. In particular, when someone copies one’s own product or trademark or instead when one is accused of copying somebody else’s industrial right.

On these occasions, the search is useful to verify the state of the art and to be able to defend oneself better. If one can find a patent or a design prior to the competitor’s one, the competitor’s claims can be nullified.

Search: before and after?

Searches are very important and useful at various moments in the life of an enterprise.

Undoubtedly, a novelty search is important before filing a patent, a trademark or a design to verify that the chosen solution does not already exist.

These are the most traditional searches with the aim of verifying whether the invention, design or trademark is indeed novel.      

Thus, this type of search is suggested to anyone who is thinking about a new solution and wishes to check what identical or similar solution has already been patented or registered before proceeding further with the development. 

However, carrying out searches in patent databases can be also useful at other moments and for other purposes. 

For example, searches on patents of competitors can be carried out to analyze the fields and technologies they are developing. These searches are useful not only to understand commercial and financial strategies of the competitor but also to understand if one is in line with the times, if one is ahead of its times or instead if greater stimulus is necessary in the field of research and development.


Not only patent search: a strategic phase

It’s important to remember that being a patent, trademark or design holder offers many advantages, not only considerations regarding protection and appearance but also financial and commercial ones.

Regarding international patent searches, databases can be queried not only to file but also to retrieve patents, trademarks or designs to buy or to obtain a license in a specific technical field.Searches are essential when one is accused of copying someone else’s patent or design. In this case, it is essential to carry out an accurate novelty search in order to try finding previous identical or similar patents or designs that can be used to void the other’s granted patent or registered design.

Searches and technical opinions: a winning alliance

Searches are carried out by resorting to specialized databases and are examined with care by the patent, trademark or design consultant.

The search is often the first phase of a more complex assessment, therefore providing a technical opinion is necessary on many occasions. A technical opinion provides a response regarding the possibility to protect one’s own technical solution or trademark, to attack a counterfeiter or to defend oneself against a counterfeit charge.

Searches are very useful when counterfeit or non-counterfeit technical opinions must be prepared, because they allow additional instruments to defend the client – either if one wants to sue or if one is cited and must defend oneself.

The areas of research

Patent novelty searches

Novelty searches have this name because their aim is to verify if there are patents prior to the one to be filed. Patents equal or similar to the subject of the invention to be protected.     

They are quite complex searches. An invention can be patented only if there is no equal technical solution in any part of the world. “Absolute novelty” concerns patents and this makes searches very difficult. In fact, databases of all countries of the world should be examined.

In addition, even only the disclosure to the public or the simple illustration of a technical solution on a specialized magazine could jeopardize the granting of a patent, therefore searches should be thoroughly expansive.      

Obviously, it is not possible to know the state of the art with this level of broadness. Therefore, searches are carried out on patent databases following the same searching method used by offices. Specifically, EPO (European Patent Office) procedures are followed to assess the novelty and inventive steps of an invention.

Italy is very innovative from this point of view. Thanks to an agreement signed with the EPO, the applicant of an Italian patent application obtains automatically a novelty search carried out by the EPO. It is one of the best searches in the world and it is obtained without paying additional costs. This makes the Italian patent very attractive and important in the international scenario.

Studio Turini always suggests this kind of strategy, unless it is obstructive to the commercial strategies of the client because the search carried out by the EPO is an important indicator about the novelty of the invention and is a great costs/benefits result.

Trademark novelty searches

The aim of trademark novelty searches is to verify if there are prior signs identical or similar to the trademark that one wishes to register, for the same classes of products or services or for similar classes.

Also, these searches are quite complex. Differently from patents, searches on trademarks are generally carried out in the states where the trademark must be registered, since the only presence of a prior trademark in that state can impede the registration.

Studio Turini performs very accurate searches – we retain our professionals on the best databases present on the market. But all searches have risk margins, even if they are minimal, also because databases are not usually updated in real time.

All searches are examined with care and discussed with the client, both before the order and upon receipt of results, so as to find and study the best way of filing also depending on the search results.

Design novelty searches

Design novelty searches are similar to patent searches, but they examine different databases.

In addition, even being specific databases for designs, it is useful to support these searches with searches of similar patents or trademarks. In fact, since the form or the drawing of a product must be protected, they can be also indicated in the body of a patent or indeed of a mark.

Depending on the type of design to be protected, Studio Turini will suggest the best type of search by consulting its experts.

If a client is charged with the violation of someone’s own design, searches are carried out even more deeply. Searching not only on patent databases but also in magazines of the field – to have greater possibilities to find a disclosed design similar to the one of the competitor that has taken action against the client.

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