Novelty Search for SEPs

A novelty search 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.

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.

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.

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.