In patent searching, compromising quality for cost may mean missing key information critical to successful patent filing, portfolio management and defensive actions. However, the pressure within most corporations to reduce costs has never been greater. Is there a balance and what could you be compromising?
In this post we look at five areas corporations and outside-counsel should review in order to maintain high-quality standards for searches and ultimately improve their search ROI.
- Skills of the person conducting the patent search
How valuable are professional searchers and are they required for a high-quality patent search? The simple answer is, yes. Of course, information is everywhere and patent information is accessible on many platforms and databases (free and paid), but patent searching is more than a simple keyword search. When you are basing your critical decisions upon the results of a search, the quality of that search must be comprehensive. One missed reference can be a costly mistake later down the line. First and foremost, the person conducting the search will need to have sound technical knowledge in the subject matter; this means extended academic qualifications (MD, PhD) alongside field experience in that given technology. In addition to the technical knowledge, the person must have a sound understanding of patent law and the legal implications of the search. It goes without saying that they also require profound knowledge of worldwide patent databases; which databases to use for the objective in hand and given technology. Utilizing a reputable search firm with qualified search professionals is the best avenue to success. A professional patent searcher will have access to the most advanced (paid) databases and a deep understanding of the nuances of searching these databases; this being a key fundamental for achieving high-quality results and value for money. When it comes to budget, paying for a high-quality patent search always outweighs the cost in the long run.
- Actionable and customized search reports
The search is complete and you receive your report; is it a data dump of references or organized and actionable? Having search results in a complete and organized report is highly valuable and ensures an efficient use of your (and your clients’) time. You need digestible information at your fingertips to make critical decisions. Investing in a patent search with actionable reports will no doubt save you time and money.
- Searching beyond worldwide databases
Worldwide database searching is the most cost effective method for researching patent and non-patent literature information. In some cases this is enough but in others it’s not… Knowledge is power and knowing your options for extended search options gives you an upper hand on prior art discovery. Especially when it comes to high stakes infringement lawsuits and office actions, you will want to exercise all avenues including full-text original language sources, unique global resources, special libraries, depositories, etc. Greater coverage reduces your risks and leads to more successful outcomes.
- Options that align with your objectives
Depending on your objectives you may want to consider the array of search options available to you. For volume pre-filing searches; how can you get cost effective searches while still maintaining high quality standards? Are there different levels for freedom-to-operate searches; what are the differences and what do I need? You’re in a high-stakes litigation case and need to kill a patent; what conventional and unconventional methods are available for prior art discovery when millions of dollars are on the line? Engaging with a professional search firm who has experience in searching for your objective can provide you with a robust set of options and advise you on the most appropriate strategy to best suit your specific objective and budget. Knowing where to look is imperative.
Communication across all departments and individuals involved is critical to successful search results. Across R&D, business, legal, outside counsel and the search firm; all need to be aligned with the objective at the forefront of the strategy. When engaging with a professional search firm it is vital to accurately communicate the objective of the search. Select a firm that you trust, has the technical capabilities and who understands your needs and cares about your business. Developing a true and trusted partnership will most certainly pay-off in the long term.
Keeping these five areas in mind as you manage your intellectual property searching will put you on the path to improving your search ROI.
TPR has been supporting the most innovative corporations, top IP law firms and IP litigators with high quality patent and scientific literature searching for well over two decades. We have established processes to provide the most impactful search results at the best value. If you would like to discuss these topics further and how we can help, please contact us.