http://www.securinginnovation.com/mark-odonnell.html joined IP.com as the Vice President of Intellectual Property Research and in April of 2006. He currently manages the direction and growth of IP.com's Prior Art Research division. He had previously been the president and owner of Radiant Technologies and Node Incorporated., two small technology firms supporting strategic technology projects for the US Customs segment of the Department of Homeland Security. From 1997 - 2003, Mr. O'Donnell was a project manager at Manning and Napier Information Services (MNIS), an IT consulting firm, where he provided consultation to many Fortune 200 and 500 corporations on various software implementation initiatives. Prior to his role with MNIS , he was responsible for designing, developing, and managing engineering projects in the consumer imaging industry for companies such as Xerox, Eastman Kodak, and Bausch & Lomb. Mr. O'Donnell contributions as a Sr. Optical Engineer at the Eastman Kodak Company resulted in US Patent 5,400,116. Mr. O'Donnell was honored in 1996 by the Xerox Corporation in 1996 where he was appointed as a delegate to the ISO SC28 imaging standards committee. In this role he officially represented the interests of Xerox and other US Imaging Companies in a voting role on the committee in Berlin Germany. His expertise in image quality standards allowed him to work with principle scientists from Hewlett Packard to jointly block newly introduced standards that would have harmed US interests in the European Consumer Imaging Market. en-us Copyright 2010 Tue, 30 Oct 2007 02:04:01 -0500 Fri, 18 Jun 2010 16:49:44 -0500 http://www.movabletype.org/ http://blogs.law.harvard.edu/tech/rss
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?
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If you have selected the right vendor, all of the classic project management steps will unfold seamlessly:

1. 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;
2. 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;
3. 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;
4. Search: The right search professional will perform the search based on the requirements and specification;
5. 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;
6. 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.]]> http://www.securinginnovation.com/2007/10/articles/prior-art-database/outsourcing-prior-art-searching/ http://www.securinginnovation.com/2007/10/articles/prior-art-database/outsourcing-prior-art-searching/ PatentsPrior Art Database Tue, 30 Oct 2007 02:04:01 -0500 Mark O'Donnell
Types of searches

Patentability/Novelty Search

Patentability searches are typically performed before a patent application is prepared in order to determine whether or not the invention will be patentable, as well as how broad the invention protection may be. Patentability searches typically include U.S. and international patents, published patent applications, and non-patent literature (e.g. proceedings and technical publications). We also offer USPTO accelerated patentability searches.

Freedom to Operate Search

Freedom to operate searches identify potential patent barriers to the commercialization of products or technologies. A freedom to operate search involves identifying whether there are any relevant, unexpired patents, and then analyzing the claims of those patents to determine whether they could prevent the manufacture and sale of a proposed product or technology.

Validity Search

Validity searches can be useful as a defensive tool when a company is concerned about infringing a particular patent. A validity search attempts to uncover issued patents or other published prior art that may render a patent partially or completely invalid. In contrast, validity searches can also be used to invalidate an in-force patent thereby allowing a company to practice that technology without paying royalties to the firm that holds the rights to the patent in question.

State of the Art Search

The state of the art search is a broad search on everything that has been done in a given art. State of the art searches are useful if your company is considering entry into a particular domain of art. State of the art search results can provide a basis for making critical market decisions. These results can also be used as a navigation framework for product and process design.

Technology Environment Analysis (Competitive Intelligence)

IP.com leverages techniques such as concept clustering and text analytics to quantify patent portfolios relative to activity in the marketplace. The tools and techniques present a set of actionable intelligence by illustrating patent activity in the market relative to a corporation's patent portfolio and R&D activities. Patents are "clustered" on the basis of similarities derived from predeter- mined patent metrics. Our specialized analysis software coupled with our many years of experience in the IP space allows us to provide you with the highest quality results available.]]> http://www.securinginnovation.com/2007/10/articles/patents/patent-search-services/ http://www.securinginnovation.com/2007/10/articles/patents/patent-search-services/ IP.com, Inc.Patents Tue, 02 Oct 2007 03:40:59 -0500 Mark O'Donnell