Deep dive into the search function in the field of patents – Addendum

Some friends, who are practicing experts in the field of search, read my articles. They recommended that the readers of my article in three parts will benefit from adding a few more purposes for which searches are done. While they agreed that my article was complete within the perimeter I had set myself they felt that an interested reader, researcher, or decision make would benefit from knowing about the other situations in which searches are done.

Hence this addendum. I describe a few other situations in which searches are done.

A) For setting alerts

Take the case of doing a search for knowing the state of the art. You may find nothing from that search that suggests that the solution you planned to work on. It is possible, however, that once you start the project a patent or application is published which describes the solution towards which you are working. Many search engines, including google, for instance, provides you functionality to set up an alert.

What this means is that you can create a search query – using keywords and classification codes and so on. Periodically, the search engine conducts a search using that query and delivers a mail to you with the information on the patents granted and applications published since the previous search. This is a good way of being updated without actually conducting a search manually.

Even though what is described is only one way, you can set up an alert query for an inventor, names of one or more companies, company names and class codes, and so on. The variety is very large and a professional searcher can set up a targeted query such that you are unlikely to miss a document of interest but are not inundated with irrelevant information. It is obvious that the time line here is for patents and publications since the last alert.

B) Before mergers and acquisition

It is said that in the knowledge economy, the value of a company is predominantly in the form of intangible assets – such as goodwill, brand value, intellectual property (IP) and intellectual property rights (IPR). It is possible that the brand value itself comprises trademarks, copyrights, and registered designs. IP and IPR comprise patents, trade secrets, and know-how along with trademarks and copyrights.

Therefore, due diligence is essential in preparation for M&A. Both parties may conduct searches for assessing the value of the patents owned by the other party. The minimum information eeded here could be the number of patents and the remaining life of each patent. Once this search is complete a validation search for at least the most important patents may be conducted.

The party being acquired conducts a search and analyses of the patent portfolio of the acquiring party to reveal how important its own portfolio is for the acquiring party. This would be of great value during the negotiations.

The time line here is all patents which are still valid. So, patent applications and granted patents with priority dates within a little over twenty years suffice.

C) For cross licensing

Some technologies have become complex and require the use of hundreds of patents to serve customers adequately. It so happens that often, those patents are distributed among a few companies that are at the forefront of the technology. In such a situation, each company will have to acquire non-exclusive licenses from the others. Then they have to keep track of their and the others’ businesses, pay and receive license fees. A gargantuan task and a wasteful one indeed.

Often, such companies come together, assess the relative merits of the portfolios of one another and come to an agreement that each allows the others to use their portfolio without paying any license fee. Thus, all have access to one another’s patents and no one pays anyone. This has several advantages in that there is no accounting, no cash outflow and cash inflow to keep track for example.

During discussions to achieve this agreement too, all the parties assess the relevant portfolios of the others by doing a search.

The time line here is all patents which are still valid. So, patent applications and granted patents with a priority dates within a little over twenty years suffice.

D) Competitor benchmarking

Every business would like to be aware of what the competitors are doing or planning to do. Often a competitors’ patent portfolio and additions to it provides such an awareness. This necessitates a search to know the preset status and alert setting to be aware of the future. This provides a means of knowing what areas of research a competitor is involved in, what new products or features are likely to come out and so on. This is a legal way of getting such information from information in the public domain.

The time line here is all patents which are still valid. So, patent applications and granted patents with a priority dates within a little over twenty years suffice.

E) Opposition

Once a patent application has been published, anyone can approach the patent office opposing the grant of a patent on that application. Of the many reasons for opposing a grant, one is that there exists one or more prior art documents that render the claims in the published application not novel or not inventive. This is called pre-grant opposition.

Similarly, after the grant of a patent, within one year of the grant, a person interested may oppose the grant. Among other reasons, the reason of interest here is that there exists one or more prior art documents that renders the claims not novel or not inventive. For the purposes here, one of the definitions of a “person interested” is an organization that has a manufacturing or trading/financial interest in the goods related to the patented product. It could also mean a person engaged in, or in promoting, research in the same filed as that of the invention.

It may so happen that the opponent may already be aware of the required prior art or may conduct or have a search conducted to unearth such documents. It is interesting to now that the opponent may become aware of either the publication or the grant because an alert was set up for the purpose.

The time line here is similar to a novelty search or an invalidity search.

I hope these additional situations in which different searches are conducted is of use to researchers and decision makers, but may still not be exhaustive. There is one type of search that is called a landscape search. It differs from those listed here and in the earlier parts of the article. Hence it has not been dealt with here. It may also perhaps deserve a separate treatment in detail.

J L Anil Kumar, Senior Consultant, LexOrbis.

1st published on Lexology.