It might not be cause for celebration, but a negative novelty report is not always quite as bad as my clients think. On the contrary: a negative novelty report is often exactly what I am looking for. In this blog I explain why.
About 9 months after filing your patent application with the Netherlands Patent Office (OCNL) or the European Patent Office (EPO), you will receive a novelty report. It contains the examiner's opinion of your patent application in terms of novelty and inventive step. This makes it an excellent indicator of the strength of your invention.
The stronger the better
Needless to say my clients and I are always looking for the best possible protection for an innovation. I am nevertheless pleased when a number of my claims are not considered to be novel or inventive. This has to do with another common wish my clients have. Not just strong protection, but protection which is also broad as possible.
A patent application is a bit like an onion
That is why patent attorneys draw up a patent application in layers. You could compare it to an onion. The heart of the onion is the core of your invention, as you actually made it. Around that we constantly build more layers which each represent slightly broader protection to cover alternatives and equivalents to your innovation as well, for instance. An examiner will do the reverse. He will peel the onion until he gets to the level where he feels that your invention is novel and inventive. Too theoretical? Allow me to give you an actual example.
In search of boundaries
Just suppose you are a bicycle mechanic and, following lots of complaints about saddle soreness, you come up with a brilliant idea: a gel saddle! But why restrict yourself to bicycle saddles in a patent application? Motorcyclists, moped users and horseback riders may all benefit from your invention. So why would you restrict yourself to saddles and not protect all types of seats? In essence you have invented a bicycle saddle with a gel filling. A second layer is the protection of all saddles with a gel filling and finally the third (outer) layer the protection of all seats with a gel filling.
An examiner will perhaps not approve the protection of this third layer, because there is already a dentist's chair with a gel filling. He may be positive about the second layer, because it is not obvious to use the (familiar) gel filling for saddles. This way you get protection for all saddles with gel filling, instead of just for a bicycle saddle. So it is not always a bad thing for an examiner to peel a layer off your 'onion', as this ensures that you have the absolute maximum protection possible.