Patent Research and the Start-Up: Pivot Quicker, Save Time, Invest Smarter

At SPSG, we are the patent research destination for many start-up companies. This article is part 1 of a multi-article series focused on ways we have seen, first-hand, how effective patent research can benefit start-up companies. Specifically, in this case, we will focus on early-stage invention discovery and patentability studies, and a particular start-up client of SPSG.

It is often the case that the IP position of a new technology can greatly impact its commercialization success / potential. It is imperative that a start-up perform early-stage IP assessments, prior to investing substantial resources, time, and money into a new technology. Early-stage IP research can help precisely calibrate a technology against the competitive environment, which may result in, for example, rethinking the technology’s application, which is certainly a less costly decision to make when done at an early stage. At SPSG, we often partner with our start-up clients, assisting them throughout the invention discovery and commercialization process. Aside from our IP expertise (former USPTO Examiners, in-house searching, law firms, etc.), our technical backgrounds (from leading science and engineering universities – MIT, Rutgers, PSU, etc.) help us to become intimately familiar with the technology and thus able to effectively comprehend what competitors are doing and where there could be opportunities to carve a niche (this will be covered in-depth in our next article).

Once an early-stage technology is developed, we find that quicker, more cost-effective patentability studies can provide useful guidance in most cases. While a patentability study will not generate comprehensive data in the form of what the current state-of-the-art is, a patentability study will answer the question or whether the early-stage technology is taught in the prior art, and who some of the major players are in the field (which can be useful in determining licensing partners, etc.). If dead-on prior art is located at this early-stage, this can provide powerful guidance to the start-up, enabling a quicker pivot or rethinking of the technology, thus enabling smarter decision-making and time-saving, which every start-up needs to maximize. Partnering with an IP search firm early in the invention discovery process is thus critical in understanding how the early-stage technology fits in the patent landscape and whether it makes sense to pursue commercialization of the technology, etc.

We recently had the pleasure of working with Colorado-based energy start-up, Affian Solutions. Here is what their CEO has to say about our work together:

“When prioritizing between start-up/business duties– outsourcing of invention discovery and patentability tasks is valuable. [SPSG], with its thorough and quick results, expedited our invention process– helping us make important decisions faster, making pivots earlier.” – Kyle Prawel, CEO, Affian Solutions

Patent Quality at the USPTO: Focus on the Prior Art Search

There has been a lot of discussion recently, via GAO reporting (http://www.gao.gov/products/GAO-16-490) on the USPTO and various Patent Quality Conferences, that bring into question and discussion a number of issues at the USPTO, from logistical and procedural improvements, to broad patent quality, etc. One aspect that caught our attention was prior art searching at the recent Santa Clara–Duke Law Patent Quality Conference:

Santa Clara – Duke Law Patent Quality Conference: Patent Quality – It’s Time

Of note: “Assistant GAO director Robert Marek next discussed highlights from the agency’s studies of patent quality and prior art search. These studies relied heavily on a survey that produced 2669 USPTO examiner respondents. The survey found that 70% of examiners reported having insufficient time to examine applications; the majority reported wanting more time for prior art search…”

…”On the issue of search, the GAO recommends that the PTO develop guidance of what constitutes a good prior art search; identify key sources of NPL; monitor search quality; and assess the time examiners need for search…”

We found the foregoing excerpts to be profoundly on point. A lot of our team came from the USPTO at one point or another. We all conclude that prior art searching at the USPTO was not generally emphasized. Search best practices were taught in a piecemeal fashion, if at all. The idea in many cases was to find workable prior art in the quickest manner possible. Of course, the goal was to find the strongest prior art, but with time constraints, and the lack of professional search training, this goal was not consistently achievable. Patent examination at the USPTO is substantially more condensed and efficient when the strongest prior art is found and applied during prosecution.

In general: Professional and comprehensive prior art searching ==> Strongest prior art ==> More efficient patent examination process ==> Stronger patents issued

From our standpoint, as professional searchers, we have seen the difference between how we searched as Examiners, to how we search professionally here at SPSG. The difference is substantial. For example, a large component of our work comprises invalidity searching. One of the first steps when tackling an invalidity study is to examine the prosecution history of the patent in question. The first section we typically read is the Examiner’s search history – where did they search, how extensive was their prior art search? More often than not, the Examiner’s search is lacking, and appears to be “quick and dirty” rather than indicating an effort to locate the best prior art with a comprehensive search strategy. As a result, we typically find substantially relevant prior art, missed by the USPTO during prosecution, in most of our invalidity searching. A less-than-desirable search by the Examiner during prosecution thus impacts the validity and strength of the patent.

From the same patent quality conference, we could not agree more with the EPO, per below. Searching should be the cornerstone of patent examination. Effective and professional searching will help to streamline examination and ultimately improve patent quality.

“EPO Patent Quality Director Alfred Spigarelli’s presentation was titled: “Patent Quality: Get it Right the First Time.” He emphasized the human resources component of the patent quality equation, from the hiring standards the EPO applies (e.g. examiners must be able to actively work in three languages), to the training each EPO examiner receives, to the low turnover rate. Search is viewed as the cornerstone of the patent examination process, with 60% of time dedicated to search.”

Simple Inventions Make Complex Patents and Prior Art Searches

What seems like a straight-forward idea can be quite complex to describe in a manner that distinguishes its novelty from prior art. Particularly in the mechanical arts, where certain features have very few terms to describe them (e.g., flanges or clasps), it can be difficult to distinguish the idea from prior art. This can be advantageous. For example, when an examiner or defendant conducts a search for prior art, exceptional large result sets due to the commonality of terms in references make identifying the best prior art difficult, and therefore may not be found at all. However, given enough time, a determined opponent, such as a defendant on the hook for a potentially large verdict, may find prior art that renders the invention unpatentable. Therefore, having a thorough prior art search before filing a patent application on these “simple” inventions may be the best defense against an eventual validity challenge. Because a thorough search may take significant time to complete, retaining an expert search firm with proven techniques both reduces costs and improves the quality of results, thus increasing the value of the prior art search. For example, a search firm thoroughly familiar with the classification systems will efficiently narrow down results to the most relevant subclasses. Further, a sophisticated search firm is capable of crafting complex search strings that reflect novel interaction of features that distinguish the invention from prior art without becoming dragged down by those generic search terms like flanges or clasps. SPSG understands these techniques and has expert searchers experienced in searching “simple” inventions and returning the best results. We emphasize not only the best quality but also efficiency to provide our clients with the most value.

For more information, please feel free to contact our offices at 626-432-7292 or email at info@shermanpatentsearch.com

The Significance of Freedom to Operate Searches for Design Patents

Design patents are frequently enforced against operating entities, either alone or in combination with utility patents. Thus, successful operations should be careful to obtain freedom to operate searches that include design patents. A freedom-to-operate search identifies active patents having claim language that your business may infringe upon. Further, a freedom to operate search has the additional layer of examination of expired prior art, which are in the public domain, and are thus free to use. Optimally, a freedom to operate search should include every country in which the technology is practiced. To ensure thorough searching of design patents in every country, the search should include both U.S. and international classification. The Locarno International Classification System is an international classification for designs that is administered by the World Intellectual Property Organization. Although it is substantially parallel to the U.S. patent classification system. However, the U.S. patent classification system has far more subclasses, thus requiring careful identification of the best fit subclasses in both systems to ensure a thorough yet efficient freedom to operate search. Having a freedom to operate search provides your business with a reassuring view of the closest design patents that may be enforced. It can save significant expenses by either providing you with the belief that there are not any design patents enforceable against your business or by identifying potentially concerning patents to allow for upfront licensing instead of costly litigation.

Comparing Specialized Patent Search Firms and Crowdsourced Searching Services

In recent years, many new services have appeared offering crowdsourced patent searches. Essentially, the search is listed as a competition where anyone may submit search results in hopes of winning the cash prize. Sometimes the search competition requires the searcher to have particular skills or knowledge, but generally the searchers receive no training and are not required to perform their searches according to a particular search philosophy and/or standard. In contrast, specialized search firms, such as Sherman Patent Search Group, invest significant training in their teams to ensure high quality results and expect the searchers to adhere to a well-developed search philosophy. Another difference is that crowdsourced searches operate by individual searchers competing against each other. Search firms, on the other hand, often assign multiple searchers to a search to ensure as comprehensive coverage of the field as possible. Finally, to increase the chance of finding perfect prior art, crowdsourced searches often take as much as six weeks to complete. SPSG, however, is often able to accommodate clients needing results much sooner. Although some searches are suitable to crowdsourcing, complex, urgent searches may be more appropriate for specialized search firms such as SPSG.

Getting The Most Bang For Your Buck In Prior Art Searches

Effective prior art searching is a critical business need for law firms, large and small organizations, and even individual inventors and startup companies. Ordering the right search at the right time results in maximizing profit from your patent portfolio. Ordering the wrong search may result in more art (and thus higher search costs) than necessary or less art (and thus higher business risk) than necessary. For example, ordering a landscape search when you really only need a freedom-to-operate search could be more costly than you need. Further, ordering the search at the optimal time is essential to maximizing the benefits. For example, patent owners may miss out on the opportunity to amend weak claims if they find themselves subject to an inter partes review. Ordering an invalidity search before this risk presents greatly reduces chances of a potentially catastrophic end to their patents. Therefore, having a keen sense of which search to order and when to order the search greatly benefits your business.

Infringement/Clearance and Freedom-to-Operate Searches

Important searches for innovative businesses are infringement/clearance searches and freedom-to-operate searches. These searches are useful for an operating business interested in obtaining a list of patents that may be used to sue them. The business provides its search firm with a description of a product, method, or other patentable idea they plan to use in operation. The search firm will then identify patents with claim language that may be infringed upon by that concept.

The difference between these searches is the infringement/clearance search returns only active patents, whereas the freedom-to-operate search also returns expired patents in the public domain. If a patent is expired, it most likely will not be used to sue a business (although this issue is quite complicated and there are situations where this is not true which are beyond the scope of this article). Moreover, depending on the disclosure, an expired patent may indicate that subsequent patents are susceptible to invalidation. Thus, the infringement/clearance search is more cost effective but does not provide the assurance or advantages that a freedom-to-operate search provides.

The timing of infringement/clearance searches and freedom-to-operate searches is critical to maximizing the benefit of these searches. The best time depends on your current operations, goals and future plans. Some choose to order the search before beginning an operation. This timing is beneficial when you have a product or operation you expect to be exceptionally profitable and has been in the market by others, in some fashion, for some time.

For example, perhaps you have improved the design of a baseball bat. Bats have been for sale for a significantly long time and therefore may be subject to quite a few patents covering baseball bats. Moreover, you have reason to believe major league baseball teams will be interested in this product, so you expect it to be extremely profitable. Thus, you may choose to order an infringement/clearance search early. Alternatively, some choose to wait until a product has already been marketed and started earning profits. A business unsure of the success of a product may choose this route since an early search for an unprofitable product would be a waste of money. Waiting until after an operation has been exceptionally successful and is well known in the market may be too late since owners of patents you infringe likely already know of your existence and will require a much higher licensing fee to settle than they would have prior to the operation earning large profits.

Landscape and State of the Art Searches

A landscape or state of the art search is valuable to businesses interested in keeping their patent portfolio as comprehensive as the market allows. A landscape search provides an overall perspective of all prior art in a specific technology field. It often reveals “white space” or opportunities for investment through filing patent applications. This search may be used to direct research and development to areas of technology allowing for the most potential profit since it reveals whether room for filing patens exists in the specific technology.

Landscape searches should be conducted frequently to maximize their benefit. Because technology markets change rapidly, white space, or areas open for innovation, change often. To stay on top of these opportunities, businesses need to identify specific technologies on a regular basis and order landscape searches in these areas immediately to avoid losing the opportunity to a competitor. Moreover, iteratively updating the landscape searches could provide insight into how hot the area is with competitors and provide insight into how much your research and development department should focus on the specific field.

Patentability Searches

Innovative operations often consider patentability searches for specific inventions. This search returns prior art relevant to the novelty of an invention, which is a basic requirement at the patent office for patentability. If an invention is not patentable, then patent lawyer fees, application fees and other costs, often far exceeding $10,000, would be wasted. Some search firms provide two types of patentability searches: one that exhaustively searches U.S., foreign and nonpatent literature databases and a “knock-out” patentability search that only looks at high-level art on a more precise scale (i.e., “102” art). The knock-out patentability search is not as comprehensive as the exhaustive patentability search. Thus, the knock-out search is more cost effective, but also more risky since there may be less-precise art that the patent office may use to reject a patent application on an obviousness basis. The exhaustive patentability search is more likely to return this less-precise art.

The timing of a patentability search is particularly sensitive. If a patentability search is ordered too far in advance of filing a patent, then relevant prior art published after the search but before the filing could result in the patent being anticipated and thus the patent lawyer fees, filing fees, and other costs, often exceeding $10,000, being wasted. Ordering a patentability search too late could mean missing your window for filing you application. Therefore, closely monitoring your patentable ideas as they fit into your business plan is critical to timing a patentability search. Knowing whether the idea is patentable and when you plan to file is essential to maximizing the profitability of your research and development and adding value to your patent portfolio without wasting expenses on ultimately unpatentable subject matter.

Invalidity Searches for Patent Owners and Accused Infringers

An invalidity search seeks to invalidate one or more specific claims of an issued patent. This is accomplished by identifying one or more pieces of prior art that read on the claims, and was not considered by the examiner during prosecution. U.S., foreign, and NPL databases are exhaustively searched. Even patent owners should order an invalidity search prior to enforcing a patent to ascertain any weaknesses in the patent and whether amendments would be beneficial prior to an attempted invalidation at the Patent Trial and Appeal Board, when it may be too late for amendments. Moreover, defendants should order an invalidity search to evaluate whether to settle, file an invalidity proceeding at the patent office, or maintain litigation through invalidity phases in district court.

An invalidity search is valuable at many points in litigation. Patent owners should order invalidity searches on patents they intend to enforce prior to enforcement since waiting too long, such as until after an invalidity proceeding at the PTAB, may be too late to amend to correct weaknesses in the patents. Defendants in patent litigation benefit from early invalidity searches due to the insight into whether to settle due to it being a particularly strong patent, file an invalidity proceeding at the patent office, and/or maintain litigation through invalidity phases in district court. Further, recent developments in district court indicate that waiting too long to file an invalidity proceeding at the PTAB could result in not getting a district court stay of litigation, so early identification of invalidating prior art is essential. Thus, early invalidity searches are critical to litigation strategy for both patent owners and defendants.

As explained above, careful analysis of which search is most appropriate and when to order the search could significantly increase the profitability of searching. This article explains a few considerations important to deciding when to search and which search to order, but every organization has specific business needs.

Ferreting out Recent Patent Publications in Patentability Searches

Since the U.S. changed to a first-to-file system, finding recent publications in a patentability search has become essential to assessing patentability. When a topic is particularly hot in certain industries, a flurry of activity at the patent office concerning that topic is common. With a first-to-invent system, there was less concern about applications filed shortly before the inventor’s application since the applicant possibly can provide evidence of earlier invention. Thus, the applicant may still choose to file an application even if pre-dating applications were already on file at the patent office. With a first-to-file system, however, regardless of the date of invention, the applicant is likely to lose patentability to the earlier filed applications, and therefore filing a patent application would be a costly mistake. Thus, it is critical to applicants to have a search that provides the most up-to-date results as possible.

Without careful searching, these recent earlier-filed applications may not be discovered, even though they are relevant to a patentability search. Although many applications publish 18 months after filing, there may be a delay in adding the publication to online databases, such as Google Patents. For example, U.S. Publication No. US2015084955 to Chen et al. was not available through Google Patents as of October 4, 2015, even though it published March 26, 2015. At SPSG, the searchers take care to use research tools that update their database frequently. Moreover, SPSG searchers use many search techniques to identify all relevant prior art, and give close scrutiny to recently published applications. For example, classification searching in addition to key term searching are critical search tools. Thus, recent patent publications are frequently reported to our clients to provide them with a full view of current developments in the field. This allows clients to make informed decisions on the patentability of their inventions and to avoid application costs for inventions that have been recently disclosed in applications filed earlier.

For more information, please feel free to contact our offices at 626-432-7292 or email me at stacia.stokes@shermanpatentsearch.com.

Breathing Life into a Prior Art Search

Breathing Life into a Prior Art Search

One valuable reason for hiring a specialized search firm such as SPSG is our ability to breathe life into a search. Many times, a search scope contains terms that cross technologies and return literature that is outside the scope search even though the reference technically contains the search terms. This is why simple tools that use basic terms and generically search for documents containing those terms in any proximity and any field rarely provides the comprehensive view of prior art a client needs. To return only the most relevant prior art, the searcher must have the creativity, knowledge, and specialized tools to hone the search scope in such a way to unearth the most relevant prior art.

At SPSG, we have a variety of ways to ensure that the search returns quality prior art. For searching patents, we use an upper level search tool, PatBase. This comprehensive patent database allows for sophisticated search strings that focus on individual fields of patents, such as titles, abstracts, and claims, in addition to searching the full text of patents. By alternating searches between these fields, the searcher is capable of focusing and broadening the search more efficiently than when using a public or simplistic tool. For example, in the simplistic search for an online store, the search was limited to just the title, abstract, and claims and a proximity of 5 was used to ensure the terms was within the same sentence. More than 25,000 results were not surprisingly returned, but had we searched full text, over 90,000 results would have been returned.

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Moreover, PatBase enables highly customizable views of the search results, including abstracts, classifications, complete families, and figures, allowing for easily identifying which results to analyze more in-depth.

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In viewing the results, we are able to customize highlighting of both individual terms and also search phrases consisting of terms within proximity of other terms, so that the highlighting provides more context in the patent.

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Additionally, SPSG often uses classification for limiting search results to the most relevant groups of patents. In this vein, PatBase provides an “Optimize” feature that narrows the search based on technology even before knowing which classes are most important. This allows the searcher to reduce over a thousand results to a couple hundred manageable results in the right technology in minimal time. For example, in the online store search, 5% of results were medical or veterinary science. Therefore, the search was optimized to exclude unrelated technologies except those in the field of computing; calculating; counting, which reduced the results and eliminated many unrelated technologies.

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These techniques breathe life into a search for quicker return of more relevant patents. This efficiency provides a significant advantage to our clients through less time spent on the search and thus lower-cost searches. More importantly, SPSG provides a highly-accurate patent search by fully utilizing our search tools. For more information, please feel free to contact our offices at 626-432-7292 or email me at stacia.stokes@shermanpatentsearch.com.

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Only as Good as the Tools You Have…

We recently had a great conversation with a client, discussing the nuances of search, and the concept of optimizing search heuristics by understanding the strengths and weaknesses of one’s search tools. For example, it is quite commonplace to perform a “search” utilizing free search tools, such as Google Patents, or the USPTO’s online search tool. There are substantial limitations in each of the aforementioned tools, that one must understand before reaching any viable search confidence. For instance, Google Patents lacks complex boolean and proximity capabilities. Google did add the “AROUND” function, however in our practice we have found this operator to be marginally accurate / useful. It is also important to note that searching on USPTO.gov only covers US patent literature, and a limited body of data at that. Further, both interfaces are not conducive for efficient, precise patent searching. As a professional search firm, we rely on a plurality of advanced, subscription-based search tools, again, each with it’s strengths and weaknesses. Powerful searching requires powerful tools, and deep knowledge of the limitations of each tool. For more information, please feel free to contact our offices at 626-432-7292

Expansion of NPL

Here at SPSG, we are constantly improving not only our search techniques / heuristics, but also the tools in our arsenal. One source of prior art frequently overlooked by other search firms is NPL (non-patent literature). Due to frequency and demand by our petrochemical / oil clients for our search services, we are proud and excited to announce our access to full-text coverage of Onepetro.org (Society of Petroleum Engineers). Onepetro is the single best source of petrochemical white papers and NPL. While we have always covered Onepetro in our searching, we now offer full-text access as well.

We pride ourselves on our knowledge and experience, and are always aiming to have the best tools at our disposal. For more information, please contact us at info@shermanpatentsearch.com, or call our offices at 626-432-7292.