What's the value of a successful first-time patent search?

There is more than one way to cook an egg, each method resulting in a very different egg, and the same is certainly true when it comes to patent searches. Most patent searches require tools to restrict the corpus of patent data to a manageable set to review in a timely and cost-effective manner. 

 

While each of the main search types (invalidity, freedom-to-operate, patentability) will have overarching parameters regarding country/date and coverage, if you delve a little deeper into each one, a myriad of resource options are available with each option aligned to a level of risk. After all, every patent search is an exercise in risk management where resources invested should align with the risk being managed.  An overly-cautious or aggressive approach can lead to wasted resources; conversely, treating the project as a more perfunctory exercise in order to tick a box or save money may have quite negative consequences downstream.

With invalidity searches, the risks/potential benefits are known from the outset. Still, the state or characteristics of a matter need to be fully considered. If litigation is in progress, or the risks of losing are particularly high, then a more intensive approach may be needed to succeed. In that event, queue the crowd. It is far better, and ultimately more cost effective, to appreciate and plan this from the outset. An initial review of the claim language and the state of the art from that period can be very informative when deciding the resources required for the optimum search.

 

But anything can happen, and not every search will suggest an intensive search investment.  We are often asked if we can do more in situations where the client has already engaged in several third party searches. The answer is always ‘yes’. In a world of over 100 million patents, there is always more that can be searched. However, as part of any disjointed search process, there is undoubtedly going to be some overlap with previous efforts. This will have an impact on overall time and cumulative costs while the most common routes must be covered. When these situations arise, with RWS you get a harmonized search process, even when you have taken an incremental search approach based on evolving risk management. The search can be staggered and refocused as the search progresses and new information is discovered without losing what was learned or discovered in earlier searches. In fact, we leverage those earlier efforts to perform more precise studies with the right resources, thereby reaching a more successful conclusion compared to a series of discrete searches by disparate third parties.

 

This does not mean that every invalidity search needs to be supersized. It depends on the state (risk) of the matter and your legal strategy. Lodging a challenge that results in more restrictive, amended claims may have the same desired outcome as having the original patent revoked in its entirety. Approaching the search from this perspective can avoid unnecessary time and budget resources.

Freedom-to-operate searches are arguably the search type with the highest associated risks. If the process does not go to plan, the ramifications may not be apparent for several years. When considering nascent technologies that are constantly evolving with high levels of innovation, a risk-averse approach that covers a large amount of material can provide peace of mind.

 

For more established technologies, where new products are created using a combination of standard components or minor improvements, the threshold for reaching a satisfactory level of confidence can be lower. With this, comes lower costs and faster turnarounds which can be instrumental in helping with rapid product launches and incremental improvements.

For patentability searches, the risk profile is relatively low compared to the types discussed above. Even with this in mind, one size does not fit all.

 

For companies that have several hundred innovations a year, there is the expectation that many will not pass through the examination procedure to grant. A low-cost prior art search process can be structured to efficiently weed out the weaker inventions before presenting to the patent examiners. This can help reduce drafting and filing costs resulting in net savings even after the search costs have been factored into the cost analysis.

 

For smaller entities, an individual patentability search may be more significant to their success as their business depends on fewer key patents. A granted patent application can be compelling to potential investors. An in-depth search conducted before filing can identify troublesome prior art that can be fed back into the design process to address any conflicts before the formal drafting and examination process is conducted.

 

The above scenarios represent a few ways in which a search process and resources can be tailored and aligned with enough foresight to appreciate the overall risk profile of a given matter and incorporate those into an optimal IP search strategy – right from the start.  A strong relationship and clear communication between the client and search provider will result in achieving the optimum patent search the first time as well as cost effectiveness when new additional search services are required.