The importance of a quality patent search for strategic monetization of innovation

quality-magnifying-glass-puzzleInnovation 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.

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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.

The Author

Stephan Sangwon Kim

Stephan Sangwon Kim is a patent attorney with Revolution IP, PLLC, located in Alexandria, Virginia. His practices are focused primarily on assisting 500 fortune companies, startups, and universities with navigating patents to assist resolving patent disputes and preparing and prosecuting patent applications. He can be reached at (703)909-0292 or skim@revolutioniplaw.com.

Stephan Sangwon Kim

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 9 Comments comments.

  1. Night Writer November 4, 2015 9:22 pm

    They are really important. I still haven’t found a company that does a good job. I always end up doing them myself.

  2. Night Writer November 5, 2015 8:54 am

    I always end up doing the searches myself. I have been burned so many times hiring the “top firms” to do searches. At the end of the day, the problem is that to do a search right you have to understand the invention and have to understand what portion of the claims –to be written–are likely to be novel. I haven’t found any firm that does a good job with this. And there is nothing worse than relying on firm and then the first OA comes back with a 102 from a competitor of the firm–man oh man is that one hard to explain.

  3. PS DIP November 5, 2015 12:31 pm

    Night,

    There are some really good searchers and some really good smallish search firms out there. The problem is scale. A fantastic single person can only do a limited amount of work and always has trouble with bandwidth. So the single person starts a search firm and leverages themselves. But how much leverage is too much? 1 to 3? 1 to 6? How does the single person keep their best employees without losing their leverage?

    Honestly, these are the same problems a law practice has and in my opinion, the successful business models are almost the same. To keep good people, you make them partners / directors / members / whatever. It means the founder loses a certain amount of profit, but it keeps the talent in house and allows for growth.

    Unfortunately, we live in a pay-me-now world and no one wants to keep the leverage low. Folks want their money in the short term, not a long 20-30 year slog of keeping up to date with technology, keeping up to date with the law, and keeping up to date with the million other things that make it a job. It’s doubly tough as a searcher compared to an attorney since the billable rate is 20-50% and all the best low level searchers have that law school carrot dangling in front of them.

    On a related note, everyone thinks the art they find is the best art. Also, even the best searcher in the world is not a 100% option. The really bad ones might find 30% of the 102b art while the best ones might find 70% of the 102b art for the same budget. With a small dataset of a single search, you’ll never know whether you’ve hired the best, worst, or someone in the middle.

    Long story short, searchers only exist to help attorneys leverage their time. If you have the time to do your own searches, then you should do them. But you also need to stay up to date with the changes in databases and have access to all 90 million patent documents from around the world and all the myriad NPL databases. The search world has been changing as fast as the legal world over the past decade, so please make sure you’re not just using uspto.gov or google to do your searching.

    PS DIP

  4. Night Writer November 5, 2015 3:17 pm

    PS DIP, what do you think I should use to do searches?

    I agree with most of what you said, but I do think that a good searcher can actually figure out whether something is patentable or not.

    I actually do not like doing searches at all. But, trying to explain to a client why the search firm missed some of the references that come back is not pleasant.

    I think maybe the answer is a more hybrid type of search where I write the claims and the search firm bases the search off of the claims. One problem I have had with this approach is that the searcher then wants to talk with me and have me explain how things work. (and seemingly put the burden of it being on a good search on me.)

  5. Anon November 5, 2015 3:20 pm

    Thanks PS DIP – I find that your inputs are typically right on the mark,

  6. Night Writer November 6, 2015 7:52 am

    Reality: if you know what you are doing you can figure out what a first response to the first action is going to look like. One can figure out what is the likely novel feature and search for it. You can’t be sure which references the examiner is going to use, but you can figure out what the patentability argument is going to be and whether there is any art to defeat the patentability argument is.

    So, a good search needs as input what is the novel feature or an iterative process. These giant searches that come up with similar inventions with some of the elements aren’t very useful.

  7. PS DIP November 6, 2015 8:52 am

    Night – So many things to comment upon, I’ll limit to two.

    Re: “make sure you’re not just using uspto.gov or google to do your searching” just means you need to know what you don’t know. It’s the Catch 22 of the search industry.

    Google provides the best 10 minute patent search of any tool in the world. However, it has a much delayed data uploading system. References published today might not enter their system for several months. Also, you cannot do a methodical search on Google. It’s great for “hunt and peck” style searching, but not a search with addressable search queries (aka search history). To do this requires one of the commercial tools such as Orbit, PatBase, Innovation, TotalPatent, or STN. Likewise, you need to be aware of the data sources not incorporated into the Google patent search engine. Does it have Australian art? Does it have Japanese art?

    The USPTO site is a great tool if you’re old school and want to use USPC codes. Unfortunately, we now have almost 100K issued patents in 2015 without USPC codes. It also has the ridiculous separation of patents and applications, no citation data for applications, and zero non-US coverage. So out of 90 million documents, it covers 12% of ‘em.

    Both tools work well and if you are comfortable using them, continue to do so. Just make sure you know what they cannot do, what other tools can do, and take that into consideration.

    Re: a searcher should figure out the novelty – Yes, I agree. However, you could help by saving them the time since you already know it. This will garner you better results and hopefully eliminate the data dumps. Unfortunately, searchers that are former US examiners were trained to treat each potential claim limitation with equal weight when the reality is that only one of them usually matters.

    On a related topic, patentability or novelty searching is the low end work for most good search firms. We often use it to train the new searchers. For these projects, the downside of missing a reference just isn’t that high (from our point of view). And we need a way to teach searchers before they get to handle more important cases like clearance and validity which are the bread and butter for the better searchers (and where missing a reference has much higher consequences). Yes, every client and project matters, but some definitely matter more than others. 🙂

    I can go on for on since searching is my world, for better and worse. As I mentioned earlier, we actually have as many hot topics in our world as US practitioners or litigators do in theirs. It’s just all so nerdy that no one up the food chain really pays attention.

  8. Night Writer November 6, 2015 9:54 am

    Hey PS DIP, I actually did searches for a summer in law school. I’ve used most the tools you mention and got very good at figuring out Japanese art based on the figures.

    I will tell you that search should be more important with IPRs. Consider that what IPRs really do is shift the burden of search from the PTO to the applicant. If you can do a good search and find the novel elements, then you have far less to fear from an IPR.

    The top end prosecution is paying more attention to searches because of IPRs. You should consider offering an IPR level search so that the patent attorney can write claims that will survive an IPR.

    I can tell you that I hunt and peck searches now and am very good at it. But, I realize it takes someone like me that knows the art, prosecution, and what is the novel part of the invention and how to present it. But, I can do a search and get an allowance within months of filing an application.

    On that note, do you do searches for petitioners? Also, what about a guarantee? What about something like a search for this set of claims and a guarantee that if an IPR is filed that better art won’t be found?

    There is a lot of room for improvement in searches. (And yes I’ve done clearance for big time clients buying companies and/or patents with budgets for me in the six figures.)

    Anyway, there is a lot of opportunity for searches to be improved and for better services to be offered. I’ve worked with a fair number of search firms some of them the big India firms that large clients demand we use. Again, semantics is the real problem. I remember one clearance I was in charge of that came back with 10,000 references that needed to be looked at. Ridiculous.

    (I wish I had the time to make all that make sense.)

  9. Night Writer November 6, 2015 10:40 am

    Just a final thought on searching, probably the biggest way to improve patent quality is to improve searches. If the best prior art was cited against a patent application in examination, then if the claims are invalidated in an IPR or CBM (other than 101), then it is the patent attorney’s fault for not amending the claims to be patentable over the cited art.

    Searches may seem boring, but the reality is that searches are key to litigation, IPRs, and prosecution.