Outsourcing Prior Art Searching
Outsource If done correctly, the outsourcing of patentability, freedom-to-operate, validity, and patent landscape searching can result in high quality, concise, and expedient results. Outsourcing can benefit corporate patent counsel, technologists, law firms, and institutions. Before you consider outsourcing these tasks, there are some very important things to look for when selecting a search firm.
Is the search firm prepared?
Any search vendor that isn't familiar with your patent activity upon your first meeting is probably not worth pursuing. All patents are public, and patent applications are public after 18 months in the United States. You should choose a firm that is aggressive enough to have investigated your company, its products, competitors, historical and recent patent activity, as well as its not-patent publications. Preparedness is one sign of competence and a desire to establish a long term relationship. This one characteristic may be the most valuable of all, in that it will ultimately dictate the quality of deliverables and assure that your expectations are met and, often, exceeded.
Does the search firm adhere to an effective and consistent process?
Many companies consider their corporate intellectually property to be corporate jewels. Never entrust corporate jewels to a hack. Too often, money and time are wasted by search firms that simply provide a pile of marginally relevant prior art references in response to a search request. This is wholly inconsistent with consulting deliverables outside the prior art search arena. Why settle for less. Look for vendors that use solid project management practices in their research, search, and reporting.
If you have selected the right vendor, all of the classic project management steps will unfold seamlessly:
- Informational Interview: the vendor will assign a project manager (PM) to learn about your business, its market, and your IP goals; make appropriate technical contacts; and agree to periodic status reports for the assignment;
- Technical Interview: the PM will discuss the specifics of the search with the technologist or legal counsel to establish the search type, parameters, deliverables, and the necessary skill set that will be required to execute the search;
- Requirements and Specifications ? the PM will document requirements and specifications of the search which he or she will use to build a search plan including data sources and search professional;
- Search: The right search professional will perform the search based on the requirements and specification;
- Internal Review ? IMPORTANT ? the PM will conduct an internal review of the results with the search professional to winnow the results to the documents which are most relevant to your goals;
- Concise Report: the PM should deliver a report consisting of no more than 15 -20 results for you to review (except for extreme cases where many more reverences are relevant and needed). After all you hire search firms to make less work for yourself, not more.
Does your search firm do this? If not, BEWARE!
Innovation is rarely a singular discipline. Most firms specialize in one or two technical areas; typically electrical and mechanical, and sometimes chemical. Inventions almost always consist of multiple technologies. The best search vendor will employ a multidisciplinary technical team that can be used to assemble task teams as well as participate in the internal review of your report. This is added insurance that you have not only received a concise result, but the correct result.
