While some corporations and law firms may have in-house patent research professionals and resources, there is an ever growing need to exclusively or partly outsource searching to a professional patent search firm; whether it be for volume pre-filing searches, over-flow searching, additional expertise, or extended global options for more complex matters e.g. prior art searching in full-text original language in other countries.

In this post, we identify the top three challenges faced by legal departments, information departments and outside counsel when it comes to outsourcing their patent and literature searches.

Selecting a Trusted Search Advisor

Do your homework and select a firm that you trust, has the technical capabilities, who understands your needs and cares about your business.  An established search firm with a proven track-record can offer you guidance and effective strategies to meet the objective at hand.  Be clear with your objective and ensure you have streamlined communication across all departments; R&D, business, legal, outside counsel and the search firm.  All groups should be aligned with one clear objective, and that objective must be at the forefront of the search strategy.  Once you have established trust and maintained clear communication you will be on the path to success.

Quality without Compromise

It goes without saying that quality is imperative when it comes to patent searching for intellectual property objectives.  After all, you are basing your critical decisions upon the results of the search and therefore the question of quality is not up for compromise.  But how do you assess the quality?  This is an industry-wide challenge, as a search is only as good as the person conducting it.  For this reason, it is paramount that the person conducting the search must 1) be an expert in the specific subject-matter (academic qualifications as well as field experience), 2) have a sound understanding of patent law and the legal implications of the search, and 3) have hands-on experience navigating  global database and resources.  All three are essential pre-requisites to a high-quality search.  It takes many years to master the nuances of searching global patent databases to the fullest degree.  It is far more complex than running a simple ‘keyword’ search.  True professional patent searchers use special coding and indexing and are adept at knowing the most appropriate databases to use for comprehensive results and most efficient use of budget.  When it comes to chemical structure or sequence searching, for example, a well-seasoned chemical or biotech search professional will far outperform another searcher who may not even be aware of the limitations they may be putting on a search by not realizing the full performance capabilities of the system.  Quality need not cost more either, since efficient searching leads to better results without wasted effort.

Dependable Timelines

Ensure your provider is transparent with turnaround time.  Your department or client may be under pressure with tight deadlines, however it is important to be realistic with setting expectations and timelines.  For some searches quick turnaround may be possible and certainly, as mentioned above, the more experienced the searcher the more efficient the search which can lead to faster results.  However for extensive freedom-to-operate, landscape and invalidity search work expect a slightly longer turnaround for thorough research to be conducted.  Complex searches such as strategic full-text original language searching in other countries for your infringement lawsuits and wider FTO coverage may require a longer timeframe, so plan that into your timeline accordingly to avoid any surprises.

Considering these challenges will have you better prepared and on the road to more effective searches for your research, legal IP and business decision making.TPR has been supporting the most innovative corporations, top IP law firms and IP litigators with high quality patent and scientific literature searching for well over two decades.  We have established processes in place to overcome these challenges and meet the high demands of our clients. If you would like to discuss these topics further and how we can help, please contact us.