IPRIMA - Intellectual Property Specialists

For something to be patentable it must be novel. In other words you cannot reinvent the wheel and then try to patent it.

However, it is common for improvements to known articles and products (and processes) to be patented. In this case it is the improvements which are the subject of the patent, providing those improvements are new. Also, in such a case, the scope of protection offered by the patent is restricted to products (or processes) incorporating those improvements.

How do you tell if something is new? Does it matter if it is known overseas?

Currently, New Zealand has local novelty meaning that patentable subject matter only has to be new in New Zealand. However, the NZ Patent Office and many libraries hold hard copies of many overseas publications, including overseas patents. In reality, if it has already beent he subject of a patent overseas, then it is likely to be published (and thus not novel) in New Zealand.

Most overseas countries have absolute novelty, which means the patentable subject matter cannot be known anywhere in the world prior to the filing date of your patent application. This is a stricter test, though some countries do have a grace period where prior disclosure may not count (though this is often limited to publication by acts of the inventor within a 12 month window before filing your patent application, and there may be some other qualifying criteria). For the most part, assume that absolute novelty applies everywhere and discuss what other options might exist, in your case, elsewhere.

Generally, searching is the method used to test novelty. Ideally this is a combination of internet searching, literature searching, and patent searching. The more thorough the searching, then the more accurate the results - with the proviso that no search will ever find everything out there. In most cases searching is a case of risk management - using the results to allow you to make business decisions.

Patent novelty searching may be done professionally, and/or by the inventor. There are a number of good online sites (see links below) which will enable an inventor to search major Patent Offices (e.g. US and Europe) theirselves. We recommend that the inventor always does some initial searching, as they are apt to find items (typically offshoots and solutions they may be grappling with) that a professional searcher will not. Professional searching has its place, and we are happy to discuss with you when this is best performed, or repeated.

Literature searching is more difficult, though many libraries have access to internet literature databases which can search keywords. Many University and CRI libraries subscribe to databases which search trade journals by keyword, and are a good place to conduct literature based searching. Many libraries also hold a range of magazines, many of which have quite a specific focus. If you are able to locate magazines appropriate to your field (the libraries will often help you) perusing through back issues will often offer valuable information about the market, potential novelty of your invention, gaps in the market and opportunities, potential distributors and outlets, etc. Many of our clients subscribe to magazines relevant to their industry so they can keep up with what is happening, and what their competitors might be up to.

Internet searching can be frustrating (due to the amount of material you might find) but is still a valuable resource for assessing novelty, as well as gleaning other information of market and commercial value.

At the end of the day any novelty assessment is just that - only an assessment. It is difficult to look in every place, and many businesses will initially rely on internet and patent searching to assess the likely novelty of their product. Given that many patent applications will not be published for at least 18 months after filing, there is a large relevant area of interest which cannot be easily searched. Accordingly, searching is best considered as an ongoing exercise, whose thoroughness and accuracy increase over time.