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
- What, precisely, are you looking for? What is the key inventive concept? What distinguishes the topic of this search from all other inventions?
- What information can you share? Do you expect a lot of results or very few?
- What are other elements of the search that may not be obvious on the surface that could cause risk? Supporting technologies, for example, or components that may have their own IP?
- What is the underlying science behind the search topic? Many searchers have worked directly in science, and a good understanding of the science is key in knowing how to put together a good query. Is the inventor available to answer scientific questions if needed?
- Are there sample publications that are similar enough to be used as a “jumping-off point”? These are excellent for an initial list of classification codes, as well as for a forward/reverse citation search.
- What distinguishes these sample publications from the search topic? There must be something different, or there would be no point to doing the search. What are the differences?
- Many search organisations have forms with a request for detail; of course, if something is unclear or irrelevant, then ask about it.
Reporting
- Before a search begins, it’s important to understand the report requirements. There is a lot of detail to be had from any search. Understanding what is available and deciding on what is of value is important. Often a searcher will collaborate with the requestor to develop a standard report format, with room for customisation if any individual search requires it.
During the search
- Feedback on sample references is needed, to clarify the searcher’s understanding of what is in and out of scope. The more detailed the feedback, the better the searcher’s understanding. This may be an iterative process, where the searcher asks for clarification about the relevance of additional references during the search, in order to set their own mental boundaries and refine their understanding of the scope. This is extremely valuable on both sides and should be encouraged.
After the search
- It’s tremendously motivating for a searcher to hear back from a client with the outcome of their search, even if it’s months later. Knowing how their work has made a difference: prevented potential infringement, guided scientists to “invent around” blocking IP, or was crucial in invalidating a competitor’s patent helps the searcher feel like an important part of the team. Likewise, if the outcome wasn’t as good as expected, it may turn out that there was a disconnect between the request and the searcher’s understanding, and a frank conversation on both sides will help the searcher better understand your next request, or help you fine-tune your communication.
There’s a lot more to a quality search than queries, searching, screening, and reporting. Free information-sharing, communication, and collaboration are some of the additional components that lead to the best quality search results.
And don’t forget to thank your searcher for their work.
Ellen Sherin is senior product manager at GQ Life Sciences. She is a registered US patent agent, and currently serves as the product manager for GenomeQuest and LifeQuest. Before her appointment at GQ Life Sciences, Sherin worked for a Fortune 500 company for over 35 years. She can be contacted at: ellen.sherin@aptean.com
