Rigorous planning essential for effective patent search

A “patent search”, as the term suggests, is the exploration for literature, patented or otherwise, on the technical information of an invention with respect to the patent in question.

A patent search is thus concerned with uncovering aspects relating to the novelty and technical advancement of an invention.

Research of this kind is considered as a necessary prevention strategy to avoid patent litigation which is often expensive, time-consuming and risky.

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These procedures have also been adopted by companies to ensure their patent applications will not be blocked by competitors, after going through the laborious procedure of developing new products. Blocking is possible in the event where an owner holds a patent over a technology which may be incorporated in a new product.

For this reason, before introducing a new product, or even beginning a novel line of research for the creation of a new product, many companies ensure they have the “freedom to operate” (FTO).

The FTO analysis is a method of identifying whether a patent or patent application may be considered to be infringing a patent that already exists. An invalidity search on the other hand, is an activity to develop a strategy to invalidate the particular patent.

There has been tremendous development in this field largely due to its being an important part of patent offshore outsourcing.

Developments in the field of coverage, the consistency of databases and the enhancement in the quality of search platforms have contributed a great deal, but much work remains to be done.
Poor indexing and abstraction can still defeat the initiatives of a researcher, but the larger issue stems from the search strategy that is adopted. The skills of a researcher may sometimes be inadequate for the search process.

Working practices and operating procedures for patent searches must be reconsidered in this context. Key steps of the patent search process, including the mechanism of search, the analysis of search results, the preparation of search reports and search tools, are important to prevent a search project from going astray.

The modern patent researcher has access to a wealth of information from around the world as a result of growing advances in technology, but faces a challenge in retrieving relevant publications from accessible databases.

This is coupled with the need for “pre-search” steps such as reference interviewing, and a thorough understanding of the relevant questions.

Common mistakes affecting the quality of freedom to operate research may be overcome by finding out about the technical subject, identifying the appropriate selection criteria, and the effective choice and use of keywords. After agreeing to take on a search request, researchers should establish exactly what kind of information is being sought.

The initiation of a search based on a general idea, carried out with the belief that an understanding of the subject matter will be achieved as the search progresses, is a fallacious notion.
An understanding of the invention in every respect is the most effective approach to finding out what one is looking for, which in turn leads to the identification of features essential for the selection of relevant documents.

Once the technical features of an invention have been uncovered, the next step, in terms of reference points on the basis of novelty, involves an analysis of the usefulness of the invention.
Any invention is designed as a solution to a problem, which in turn may be the result of a cause and an effect relationship. Being aware of all possible cause and effect linkages associated with a particular invention provides additional keywords that can be used for searching, and may help to improve the quality of the search.
A selection of synonyms for technical terms and keywords will also play an important role in developing effective search results.

Identification of the selection criteria depending on the essential features of an invention, and also on the type of search request, help the researcher gain a crystal clear view on what the search should conform to.

A search may start in a small and precise way and gradually expand by employing different search terms. There tend to be, therefore, increasingly more search terms at one’s disposal in smaller environments, resulting in precise hits and result sets.

A patent search according to a standard process tried and tested for better results, is perhaps the best approach when there is a lot more common sense to be infused into each stage.
Considerable care is needed at each stage of a patent search to find the documents that the researcher should be looking for, in an expeditious manner.

Ascertaining well in advance, whether an unfamiliar product has been patented is crucial to prevent unwanted litigation and beneficial in reducing the time and costs associated with new product development.

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Dr.Sushil Kumar is the vice-president at Clairvolex Knowledge Processes, a Delhi-based legal outsourcing firm.