How to do a Novelty Search: A Step-by-Step Guide for Patent Searching
When you're conducting a patent search, it may be a daunting task, and you may worry about missing relevant earlier documents (“prior art”). The novelty search process involves searching for existing inventions, narrowing down results, and refining your shortlist.
Here's a step-by-step guide to help streamline your approach.
There are many different free patent searching tools Espacenet or Google Patents. My preference is Espacenet, because this is managed by the European Patent Office and is not a private company.
1. Start with a Basic Keyword Search
Begin with 3-5 key terms that are directly related to the invention. These keywords are typically found in the inventor’s description. Common sources for initial keywords include:
- The invention’s purpose or function
- Technical terms from the relevant field
- Core components or processes involved
Once you have these keywords, search across the Title, Abstract, and Claims (TAC) sections in patent databases. Your goal is to check if any closely related patents already exist—ideally within 5 minutes of searching.
2. Expand Keywords with Synonyms and Variants
Next, broaden your search using synonyms or alternative phrases. Remember that attorneys may not always use the most precise technical language, so think creatively:
- Use OR functions to link different synonyms together (e.g., "rotate OR spin OR turn").
- Consider words from other fields or general terms that could apply.
You should also use the root/stem of words to capture variations. For instance:
- Use rotat* to cover "rotate", "rotating", "rotation", and "rotatable."
3. Combine and Refine Search Strings
Once you've expanded your keyword set, start combining them. Your objective is to reduce the number of results. Ideally, you want to get the number of hits to around 30–50 documents, which will be manageable for further analysis.
- Apply Boolean operators and combine different sets of keywords to filter results more effectively.
- Use a proximity operator if possible (e.g., "rotate W5 axis") to ensure relevant keywords appear close to each other in the text, signalling that they are contextually linked.
More detail on Espacenet search functions here (https://link.epo.org/web/technical/espacenet/espacenet-pocket-guide-en.pdf)
More detail can be found on searching functions at Google here (https://support.google.com/websearch/answer/2466433?hl=en)
4. Leverage Patent Classification
A key element of patent searching is classification codes (e.g. B63B 1/00), which are based on the technology area. Look for patents in the relevant classification for more precise results.
- Avoid using keywords directly associated with the classification title, as this might exclude some documents.
- Instead, search broadly within the classification and rely on the technical details to guide you.
You can search for a particular patent classification here https://worldwide.espacenet.com/classification?locale=en_EP
5. Identify and Analyse Close Earlier Documents
Once you've found a promising document, it can act as a springboard for deeper searches. Here's how:
- Identify forward and backward citations of the patent to find other relevant documents.
- Add any relevant patents to your shortlist.
6. Refine Your Shortlist
Not every document on your shortlist will remain relevant as the search progresses. Regularly refine the list:
- Remove patents that turn out to be too general or off-target.
- Keep a tight focus on patents that closely match the invention.
7. Expand into Competitor Searches
If no close earlier documents are found, it might mean you are searching in the wrong technical area. There is always an earlier relevant document, you just haven’t found it yet! In that case:
- Identify key competitors working in the same technology.
- Analyse their patent portfolios for relevant classifications and terms.
By examining competitors’ classification summaries, you can further refine your keyword and classification-based searches.
8. Create and Manage a Shortlist
Once the shortlist is identified, it’s important to review these documents in the context of the proposed concept. Ideally, the shortlist should not exceed 10–20 documents. If more documents show up for the same concept, stop at around 10. This demonstrates how well-known the idea is in the field.
At this stage, you should have a reasonable understanding of the most relevant earlier documents. The most critical documents should be placed at the top of the shortlist, ensuring that the most important earlier document is highlighted for easy reference.
9. Repeat for Specific Implementations
As you refine your understanding of the patent landscape, loop back to your keyword search and shortlist. The more specific you get about the invention’s implementation, the more focused your searches will become.
By following this structured approach, you can efficiently identify relevant patents, ensuring that no important earlier documents are overlooked while minimizing the risk of irrelevant hits.
10. Other sources for documents
It also makes sense to search other sources such as academic papers. Google Scholar can help with this https://scholar.google.com/
Finally, a general web search is always a good idea!
Lastly, this is not legal advice. Always seek the advice of a patent attorney if you want to carry out a professional novelty search.
If you would prefer assistance with conducting a novelty search, we at Lightbringer can help you. Read more and see our prices here: Novelty Search.
