Novelty Search for SEPs
A novelty search for standard essential patents looks for prior art that overlaps with the key features and inventive step of an invention before a patent application is filed. It reaches beyond patents and journals into contribution documents, meeting reports, and standard documents.
What the report decides
The outcome of the novelty search report determines whether to file for a patent. We focus on discovering all critical prior art references, single or in combination, that overlap with the key features and inventive step of the invention.
A novelty report is also helpful for the patent attorney to draft patent claims designed around the prior art references that are found.
Where the standard lives on paper
We have access to global patent and non-patent databases to search for prior art documents comprehensively. For a standard essential patent, we give particular attention to the sources where a standards programme first discloses its work.
- Contribution documents
- Meeting reports
- Standard documents
AI widens the search. Analysts judge it.
We do use AI, but do not rely on it.
Machine-assisted retrieval
Widening a first pass and surfacing wording an analyst might not have tried.
Judging the reference
It is not reliable at judging whether a reference teaches the inventive step, or at reading the technical context of a standards submission.
Results are read by an analyst, and the reference set that reaches the report has been assessed by hand against the key features of the invention.
Novelty search or invalidity search?
The searching skills overlap, but the two run at different points and read on different text.
| Novelty search | Invalidity search | |
|---|---|---|
| Timing | Before filing | After grant |
| Question | Is the invention new enough to be worth an application? | Can art defeat claims already issued? |
| Reads on | The invention as described by the inventor | The granted claim language |
| Usual driver | A filing decision | Litigation pressure, against a fixed priority date |
Who commissions it
Companies contributing to a standard
Deciding whether to file, before the invention is disclosed any further.
Patent attorneys
Drafting claims designed around the references the search turns up.
Research teams
Checking an invention before it goes any further internally.
A standards contribution is often the first place an invention appears in print, sometimes before the inventor's own filing.
What you receive
- A novelty search report covering the key features and inventive step of the invention
- Prior art references found in global patent and non-patent databases, single or in combination
- Coverage of contribution documents, meeting reports, and standard documents relevant to the invention
- A view of the overlap that supports the decision on whether to file
Frequently asked questions
What is a novelty search for SEPs?
It checks whether an invention is already known before a patent application is filed. The search looks for critical prior art references, single or in combination, that overlap with the key features and the inventive step of the invention. For standard essential patents it reaches beyond patents and journals into contribution documents, meeting reports, and standard documents, because that is where much of the relevant disclosure in a standards programme first appears.
How does a novelty search differ from an invalidity search?
Timing and purpose. A novelty search runs before filing and asks whether an invention is new enough to be worth an application. An invalidity search runs after grant and looks for art that can defeat claims already issued, usually under litigation pressure and with a fixed priority date to beat. The searching skills overlap, but a novelty search reads on the invention as described by the inventor, while an invalidity search reads on the granted claim language.
Is AI used in the search?
AI is used, but it is not relied on. Machine-assisted retrieval is good at widening a first pass and surfacing wording an analyst might not have tried. It is not reliable at judging whether a reference actually teaches the inventive step, or at reading the technical context of a standards submission. So results are read by an analyst, and the reference set that reaches the report has been assessed by hand against the key features of the invention.
What does the client need to supply?
A description of the invention, in enough detail to identify its key features and the inventive step. A draft disclosure, an invention record, or a set of draft claims all work. If the invention relates to a standard, naming the working group, release, or feature area helps focus the search on the right contribution documents and meeting reports. Any references you already know of are useful, since they mark ground the search need not repeat.
Check the invention before you file
Share the disclosure or draft claims, and the standard it relates to if any, and we'll scope the search.
