Investing in patent search: tips for practitioners

What is the cost of a single missed reference in the IP world? It depends on the situation. Research programmes that spend millions to develop inventions which turn out to be unpatentable because of prior art, long drawn-out prosecutions with multiple rejections, post-grant invalidities and infringement litigation are just some of the possibilities. No search is perfect, and there is always the chance of missing something—but the better the search, the better the subsequent decision-making.

Professional searching, especially IP searching, is a unique skill and is as much an art form as is patent drafting. A proper search builds on multidisciplinary scientific knowledge, some understanding of IP law, understanding of the mechanics of patents and the excruciating minutiae of class codes, patent number formats, priorities, dates, etc. It also requires creativity—“What are the many ways someone could describe this concept? This compound/sequence? What are the different gene names? Languages? Alternative spellings? Sequence notation?”

Although the IP practitioner makes the final decisions about claim construction and scope, prior art considerations, freedom to operate (FTO) and all the other key items that go into drafting, prosecuting, and protecting an IP estate, the best decisions are founded on the best data. A high-quality IP search is one of the linchpins of this type of data. An investment in the search process and collaboration with the searcher will return big dividends in both the search quality and the turnaround time.

So, as an IP practitioner, what does collaboration with your searcher look like, and how does it work?

First and foremost, it requires excellent communication throughout the search process. The clearer you are about the focus of the search and the key inventive concept(s), the more on-point the results will be.

Here’s a summary of areas throughout the search which are fundamental to the quality of the result, separate from the actual search itself. These will lay the foundation for the searcher to optimise their search strategy and queries, based on a solid understanding of what is actually needed.

Before the search