Top 3 reasons a patent search can fail (and how we mitigate for success)
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Top 3 reasons a patent search can fail (and how we mitigate for success)

By Peter Vanderheyden, COO RWS IP Research

At RWS we take a unique approach to patent searches – we cover the more “traditional” search methods with our highly experienced team of in-house patent analysts located at our office in London, and we also have the unique capability to perform crowdsourced searches. Clients often come to us having either attempted to perform their own searches, or having gone with a smaller more traditional outfit in an attempt to “save money” (which is counterproductive considering they usually do not receive the results they were looking for and have to continue the search at additional cost), so our views here are highly informed by client experiences with other vendors and we are readily familiar with the mistakes or misconceptions that preceded the matter arriving on our desks.

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In performing over 2,500 searches each year, many of which are performed only after a scenario as outlined above, these are three of the most common issues we see:

  1. The budget trap
  2. Lack of resources
  3. Failure to adjust search methodologies

The budget trap

We understand that most of our clients are working on fixed budgets set by their own clients – it is simply a reality of the legal services business. Even faced with the threat of litigation clients will often tell their attorney they want to only spend the absolute minimum on a patent search, expecting the lone patent searcher entrusted with the task will have the same working familiarity with the subject matter and topic that they might have. After the “budget” sensitive search is performed (typically a simple cursory search of the PTO database and maybe a basic keyword google search), turning up nothing of real use, the end client is now out of that expense and no more closer to having a piece of invalidating art than they were when they started.  They are not only out of both time and money, they really have no sense of whether the art they need is out there.  Was this a thorough search?  Would more searching be profitable?  If so, what did we learn and what could be done differently to achieve a better result (both in actual results and in the confidence of what was found based on the energy that went into the search). Not an ideal place to be when facing the threat of litigation.

In the scenario outlined above, the end client not only has to pay the first patent searcher for their services, but they must seek out an additional search to find invalidating art, incurring more expenses along the way. We have had clients come to us for the first time after having already gone to two or three other search firms (I think the record holder is actually five), still looking for that “silver bullet”. They come to us with the belief that if the silver bullet exists, leveraging our 40,000 researchers in hundreds of countries, as well as our in-house team of professional search specialists and search study managers, we will find it (or give them the confidence that it is not there and thus a new strategy needs to be taken). It is important to have an honest conversation with your clients about what the budget for a patent search should be based on: what is most likely to produce the best outcome for them, in the quickest time frame and ultimately at a lower cost (even if not initially). Smaller patent search services simply do not have either the experience, resources or flexibility to handle in-depth patent search requests, and that leads us to our next point.

Lack of resources

In some sense it is not fair to compare the resources offered here at RWS with that of a small law office with one person who performs patent searches or even a smaller patent search firm. At RWS we have over 25 in-house research analysts, each with subject matter expertise and an average of 16 years of search experience. We leverage technology like PatBase and AOP Connect, and our processes are certified to ISO 9001 quality assurance standards. We also offer something no one else does: crowdsourced patent searches. With over a decade of experience in creating, launching and performing crowdsourced patent searches, nothing comes close to the depth and breadth of the patent searches performed by RWS. We have a global crowd of over 40,000 highly educated researchers, with most holding BA/BSc degrees or higher. They speak over 140 languages and are located around the globe.

It is important to remember that a piece of invalidating art can exist anywhere in the world so long as it is publicly disclosed and existed before the effective filing date. We have had “silver bullets” located in newspaper clippings located in a library in Finland – would any of the other search services you might be considering have found that? With crowdsourcing, the scalability is nearly limitless, but with more “traditional” patent searches, you are limited to the resources of that individual or office performing your search. Neither situation is inherently good or bad; the key is that the method and resources be aligned with the desired outcome.  When doing your own risk assessment against the purchase of a search, you have to strongly consider whether or not the demands of the search you are requesting actually aligns with those who are performing your search (number, experience, search methods, etc.), and whether or not they have the resources to achieve what it is you are asking of them.

Failure to adjust search methodologies

If you have used certain patent search services regularly and got mixed results, you might know what to expect (or rather, not to count on).  This can be the result of a mismatch between the search requirements and search methodologies. Every individual searcher does things slightly different and has different backgrounds, resources, databases, etc. that they bring the equation. If you only have one person looking at your problem, you can only expect one set of results based on their “formula” or method. In most instances, you do not get the opportunity to influence or inform the search, they do what they do.  You simply ask them to look for something and they go and look for it in the way that they always have. While this can be very effective for FTO or patentability once you and the searcher align on an acceptable method and report, it can be highly unproductive for higher risk searches such as are required in litigation.  A mismatch between methodology and matter can only guarantee poor results.

At RWS we take a different approach to bypass this pitfall. With our traditional search services, we will consult with you to pair the best subject matter specialist to your search and ensure someone who is well-versed with the technology or area you wish to search in is on the case. We will also align on the methodology and process we will follow (again, ISO certified at RWS) to ensure we deliver a result and report that you can rely on with confidence.  With our crowdsearch services, our searches are managed by a team, including attorneys and former PTO examiners, who not only assist in formulating and consulting on the scope of the search, but who can issue updates and leads to the crowd, in real-time, based on the initial results that are coming in (you might be surprised by how they can inform a search in real-time). This allows us to pivot and explore directions you might not have even considered, but ultimately delivering the results you need. Flexibility in the approach and methodology for each individual search is a critical component in getting the desired results aligned to the needs and expectations (and ultimately the budget) that different matters require.

Conclusion

These are just three of the common pitfalls that occur in patent searching – unfortunately, there are plenty more, but RWS has a methodology developed over many years for each one. On 24 September 2020, we will be hosting a webinar at 12:00PM EDT on Best practices for avoiding patent searching pitfalls, where we cover these topics and more. For more information on that, and to register, please click here. We hope to see you there.