Patent & Design Prior Use

As Registered Australian Trade Marks Attorneys with more than 20 years’ experience in the field of intellectual property and trade mark, NovelIP have extensive knowledge as patent information consultants and patent searchers and are able to guide you through the complexities of patent information. 

A simple patent or design search can save your client a lot of time, money and effort in the long run!

NovelIP conduct three main types of patent investigations including:

Landscape Investigations 

Landscape investigations involve conducting comprehensive searches of Australian and International patent, design and non-patent literature to provide context to the state of the art at the priority date of patents or designs. These investigation reports can be used to give informed opinions on the novelty and inventive/innovative steps of the patent claims. 

Novel IP Investigations has access to free and commercial databases such as Derwent World Patent Index™, EmbaseⓇ and Food Science and Technology Abstracts (FSTAⓇ). 

Targeted Investigations to Undermine a Patent or Design

Targeted investigations are conducted to identify secret use or disclosures of the inventions or designs by inventors and authors before the priority date.  

Novel IP Investigations can conduct investigations that scour publications, conference records, employee records, social media, etc. to identify and pursue leads to potential disclosure such as presenting at conferences, using prototypes in a commercial setting, discussions with suppliers, offers to sell to customers or competitors, etc.

Family and Equivalent Investigations

Family and Equivalent investigations are conducted to identify patent or design applications or registrations sharing a common priority document with a property of interest, and report on their status.  We do this through a methodical process involving data mining and foreign associates.

Case Study 

Our client had been accused of infringing a certified Australian design.  

A background check on the design author/owner revealed where they had been living and working in the years immediately before the priority date. Further investigations of social media, historic versions of websites on the deep web and telephone inquiries established that the author had disclosed the invention prior to the design priority date at an industry event and to several customers. 

Given this evidence, lawyers were able to subpoena records and invalidate the design. The matter was subsequently resolved out of court and our client continued to manufacture and sell their product.

Our reports are provided in a format that can be easily transferred into a Statutory Declaration or Affidavit for use by our clients moving forward.

If you would like advice or help on trade mark infringement, please get in touch and a trademark consultant will be in contact to discuss a strategy that meets your objectives and budget.