The prefiling novelty search
A prefiling novelty search looks for patents and other publications that disclose the same or similar features to your invention, before you file anything. It can be done by you, by a patent attorney or by a professional searcher.
A sensible starting point for any inventor is Google Patents, which lets you search a large international collection of published patent documents for free. It takes time to think of the right keywords, try different combinations and read through the results, but it costs nothing and often turns up something useful. A professional search goes further, combining structured keyword searching with patent classification searching across international databases, and analysing the closest documents found.
The main advantage of a prefiling search is timing. It happens before the specification is written, so the results can shape how the invention is described and claimed. If the search finds something very close, you may decide not to file at all, or to redirect the application towards the features that are genuinely new. In crowded fields, or before a major investment decision, that early information can be valuable.
The limitations are real, though. A private search is not the examiner's search. The examiner will carry out an independent search during examination and may cite different documents, because of differences in search strategy, classification, language and database coverage, or because inventive step is assessed by combining documents in ways a searcher didn't anticipate. A prefiling search reduces uncertainty, but it can't tell you what an examiner will think.
The international-type search
An international-type search is an optional search that IP Australia carries out on an Australian provisional application. It must be requested within 10 months of the provisional's filing date, and IP Australia aims to report within about six to eight weeks. An IP Australia examiner searches the prior art against the claims and gives an opinion on whether they are new and inventive, using the same standards that apply to international searches under the Patent Cooperation Treaty (PCT).
Its main advantage is that it is an examiner's view of your actual claims. Instead of a searcher's assessment of an idea, you get the patent office's opinion on the claims you intend to pursue, early enough to do something about it. If the examiner cites relevant prior art, the claims can be adjusted before the complete application is filed, focusing them on the technical features that set your invention apart.
The search results can also be carried forward. When you file a PCT application, you can ask the International Searching Authority to take the earlier search into account. Under the PCT rules, where IP Australia carried out the international-type search and also acts as the International Searching Authority, it must do so as far as possible. With claims already amended in response to the earlier search, the chances of a clear written opinion at the PCT stage improve considerably, and that opinion is then the starting point for examination in each country you enter. We explain the written opinion in how the PCT written opinion and international preliminary examination work. We explain this sequence in our approach to patent applications.
The search does have limitations. It needs claims, so it is only possible if your provisional includes them, which is one more reason to prepare the provisional in complete format, as we explain in what's the difference between a provisional and a complete patent application?. It happens after the provisional is filed, so it can't change what the provisional discloses, only how you claim it from here on. And like any search, it can't guarantee that examiners in other countries won't find different prior art.
A prefiling search tells you about the field before you draft. An international-type search tells you how an examiner sees the claims you have drafted.
Comparing the two
The prefiling search is earlier and more flexible. It can shape the specification itself and can stop you filing an application that was never going to succeed. It is a private opinion, though, with no standing in later examination.
The international-type search comes later but carries more weight. It is an official examiner's assessment of your actual claims, it can be carried forward into the PCT, and it gives a more reliable indication of how examination is likely to go. It depends on a provisional with properly drafted claims, and it can only refine those claims rather than the disclosure behind them.
Which do we recommend?
For most inventions, we recommend the international-type search during the provisional period. It gives the most useful feedback for the cost, at a time when there is still room to act on it, and its benefit carries through to the PCT and national stages.
A prefiling search is worth adding when the field is crowded, when you are unsure whether the core idea is new, or when you are about to invest heavily on the strength of the patent. In those cases it can be well worth spending a little to find out early.
Whichever search you use, the specification still needs to describe the invention thoroughly and claim it from several angles, from broad claims through to narrower fallback positions. If the examiner finds nothing close, we can pursue broad protection. If the examiner finds something that reads onto the broad claims, the detail in the specification gives us the technical points of difference we need to amend and argue. Our article on the pitfalls of a poorly prepared provisional patent application explains why that detail has to be there from the start.
If you would like advice on which search suits your invention, contact Patentec for a free initial consultation.