Looking for prior art can be a little like looking for a needle in the proverbial haystack. You set out looking for the closest references, which typically comprise patents and various printed publications. But where are you going to look? There are plenty of databases one can access, but each database comes with inherent limitations. You can only find what is within that particular database. While you can string databases together to do a more comprehensive search, no patent search is ever going to be able to search for each and every reference known to exist.
When you are doing a patent search to determine whether it makes sense to spend the time, money and energy to move forward with a patent application you expend an amount of money that is a fraction of the amount you will likely spend on the overall pursuit of the patent. For example, when we do patent searches for software related inventions we charge $2,500, which is roughly 10% of the overall cost of obtaining a software patent from start to finish. Can you find everything for $2,500? No, but you can get a very good sense of what else is out there and whether there is any realistic likelihood that a patent could be obtained.
This type of search is just not enough though for some circumstances. Perhaps you are considering acquiring a patent and spending several hundreds of thousands of dollars to do that, or maybe even $1 million, which is likely the top line number anyone could expect to receive for a single patent. In that scenario spending $2,500 to search and investigate the integrity of the rights obtained would not be sufficient due diligence. You may not want to spend 10% looking since the Patent Office has already issued the patent, but you are likely going to want to search some places where others haven’t likely looked in association with the patent examination process. Perhaps you do a broad based international patent search and some kind of modest search for non-patent literature to investigate whether it makes sense to acquire the patent. You do this because if those claims are invalidated or likely to be invalidated then you have just bought a rather useless piece of paper.
But what do you do if you are being sued for patent infringement? If you can invalidate the claims that are being used against you then you win, you can continue doing what you are doing and you don’t have to pay the patent owner. Given the cost of bringing a patent infringement litigation, which averages over $2 million in attorneys fees alone, you are not likely to be sued for patent infringement unless there is real money at stake. Of course, there are some nefarious actors that engage in “extortion-like” behavior that will sue for even small amounts, but by and large patent infringement litigation only makes sense if there is a large amount of money to be had.
In the litigation context you want to spend nearly whatever you can to search for that difficult to find prior art that will invalidate the claims that are being asserted against you. It is not unusual in large scale patent litigation where there is tens of millions of dollars on the line for defendants to spend $1 million or more searching for prior art. Once upon a time that search for invalidating prior art was nothing more than a search for the holy grail. Leave no stone unturned, travel the world researching in library after library and find the one article or thesis that would save the day.
Today there is a different solution for those who need to find that particularly illusive non-patent literature that typically makes up the best, most damaging prior art. Rather than conduct the search around ever corner and under every stone you can leverage the knowledge of a global network of highly educated and highly trained researchers. Essentially, you can tap into their specific knowledge and stores of information by engaging the power of crowdsourced patent searching.
Article One Partners, a major sponsor of IPWatchdog.com, is the leading crowdsourcing patent research firm in the world. Through their community our global researchers their clients are able to obtain higher confidence that they have performed a true blue-chip patent research in pursuit of that single needle in some remote haystack.
I have written about Article One partners for many years, and the firm has only recently become a sponsor of IPWatchdog.com. I think what they do is of exceptional value, and they have a variety of services they offer that can fit almost any budget, ranging from $2,000 to $25,000.
Since Article One became a sponsor whenever I go to industry events it is inevitable that people will come up to me and ask about the company, what they do and how they accomplish their research tasks. I am happy to answer those questions, and typically individuals are surprised to learn about the vetting that goes on internally, as well as being surprised to learn that the Article One research community is comprised of so many individuals who have advanced degrees. Indeed, 50% of the Article One research community hold advanced degrees.
Increasingly the Article One research platform is being used by more companies and law firms for a variety of reasons. Indeed, Article One Partners count as their clients some 16 of the Fortune 100, 18 of the top 25 targets of Non-Practicing Entities (NPEs), and 7 of the Top 10 Patent Filers in the United States. The clients use the Article One services for:
- Patent Litigation (NPE defense, pre-litigation)
- Due Diligence (Acquisition, Licensing)
- State of the Art (Landscape, Product clearances)
- Oppositions (European, Japanese)
Given the cost of finding that most difficult to find prior art on your own it makes sense to spend the 30 minutes to see whether the Article One solution is one that you can benefit from. My guess is that you will find their offerings to be far more economical than whatever search for the holy grail you are currently doing, and the results to be rather remarkable.- - - - - - - - - -
For information on this and related topics please see these archives:
Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Litigation, Patents
About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.