Innovation is a process that proceeds in distinct stages. The first stage consists of the uncovering the innovation from engineers of company’s R&D departments, which is not always as easy as it sounds given that many engineers and scientists do not have real familiarity with patent laws, so they do not always appreciate what can and should be protected.
During this first critical phase, the in-house IP attorney, patent engineer or liaison must gather as much relevant information from the researchers and front line engineers as possible. In addition to obtaining technical information about the innovation it is also very helpful to obtain information on other sources, such as issued patents, publications, and related technical information that is already known. This additional information not related to the innovation itself will help down the road for a variety of reasons. For example, searchers must understand the relevant technical field specifically relating to the intellectual property in question, and ultimately the patent practitioner will want the best picture of the prior art as possible.
Properly used, a quality search can be one of the most cost-effective and valuable tools a company can have to not only capture and create innovation, but also to avoid being sued for infringement. This dual purpose for a search is important to understand. A novelty search is intended to determine whether a patent can likely be obtained, but sometimes it will be quite useful to undertake a more comprehensive analysis of the search results to determine whether moving forward might result in a charge of patent infringement. An infringement analysis is more complicated and time consuming, but for some clients it will be worthwhile to pursue such a search in conjunction with a novelty search, or even outside of a quest to obtain a patent themselves. Thus, in order to maximize the value of a company’s portfolio it is critical for business managers to understand the of importance of a search— including what kinds of searches are available (i.e., domestic, international, novelty, non-infringement), why to consider search before filing patent application, when to get searches, who should conduct and review search, and how to strategically use search result.
After the relevant information has been gathered, the next stage requires the in-house IP attorney to go to work analyzing the search results and scrutinizing the rights, duties, and limitations in light of the current state of the law and the client’s interests. In this stage it also requires effective communication between the in-house attorney or patent practitioner and engineers from the R&D departments. Unfortunately, this communication is often times lacking, which will mean that any future work product will not be as good as it could otherwise have been. Researchers are always busy, but convincing them of their critical role in the patent process and how important it is for them to cooperate and communicate is essential. They know the invention best, and without their serious and thoughtful input a difficult task of obtaining the strongest rights will become even more difficult.
In a perfect world the communication between attorney and research will involve the analysis of current invention disclosures, and different solutions provided by the prior art located during the search, difference between company’s desired direction and prior art, and any improvements of the company’s direction in view of the located prior art. These distinct components must be meaningfully analyzed and considered. Without the assistance of the engineer or scientist who is the inventor the attorney or patent practitioner will be left to figure this out on their own, which may result in nuances being missed. The key is you want the innovator to be the captian of the project when it comes to the technology, not the patent practitioner. A patent practitioner is very good at drafting a legally appropriate technical description of an innovation and actually getting a patent issued, but you do not want the patent practitioner to be the one to decide what aspects of the innovation are most important. Communication is absolutely essential and the patent process must be viewed as a team effort in order to maximize success and value for the business.
So far we have discussed obtaining a patent search and going through an analysis when it is known that an innovation has been achieved. Sometimes, however, a search can be quite useful even before this point. One significant business reason for obtaining searches relates to product development. An analyzed technical opinion based on search result can be invaluable for evaluating the patentability of a potential new product, or a product considered for development. This is true because if after a search the field is quite crowded and only very narrow patent rights look potentially available it may be far more fruitful to pursue a different avenue. After all, innovating is on some level is as much about conserving funds and pursuing the best alternative. No company can pursue every innovation path, that would be too costly. So doing a broad based search to determine direction can be extremely helpful and will result in the wisest allocation of resources, which are always finite.
A defensive strategy focuses on protecting current products by obtaining patents that protect key features of the product. To implement this strategy, the company may or may not study prior art and file patents that it believes covers its current product line. Such coverage may prevent direct copying of the products and may reduce the risk that a competitor will obtain patent protection on the products.
Another strategy has been used to generate income, or generally speaking to monetize a patent or protfolio. is sometimes called a “picket fence” strategy. It is focused on obtaining relevant prior art based on search covering all practical alternatives to the company’s product line. The company would then file multiple patent applications and obtain patents, thereby building a wall around a market to prevent competitive market entrants. This aggressive strategy requires identifying the differences between the company’s patent coverage and approaches analyzed by prior art, which an eye toward what competitors are doing and how best to block competitors from encroaching on the space you wish to concentrate on moving foward. A substantially broader patent portfolio can be analyzed when studying search results related to the company’s patent strategy. Accordingly, this strategy requires a quality search and analyzed technical opinion to identify gaps and open spaces. Again, this type of search is not necessarily related to a particular innovation that has been unearthed by engineers or scientists, but is intended to map an area to show opportunity and potential vulnerability.
The above strategies are effective means towards reaching a goal, but qualified analysis process based on search must be addressed to ensure proper execution. It is likely that any particular patent strategy may require different techniques, and different searches with varying scope and depth, but having quality input based on qualified patent search with comprehensive analysis of relevant prior art should be viewed as an essential aspect of any integrated patent strategy.