If you’re a small company wanting to establish your brand as a key innovator in your industry, creating a diversified patent portfolio is the best way to achieve that goal. Under the patent laws of most countries, issued patents are presumed valid. So, when your company has a lot of patents under its belt, you secure a sense of freedom to operate freely in your industry, especially when it comes to research.
But, despite having issued patents, no company can or should feel assured about the validity of their patents. For example, other inventors may enforce patent rights granted to them to sue your company for patent infringement. Then, your company has no option but to countersue and oppose the patent infringement claims. These litigation procedures are expensive, time-consuming, and best avoided.
Unfortunately, patent infringement claims are way too common. During patent reviews or pre-trial motions (also known as inter-partes reviews), the validity of patents is challenged on the basis of various prior art references. Prior art references are proofs that establish the non-novelty of patents. In simpler terms, the claims made in your patent may be present in patents that have been issued in the past.
The prior art reference that challenges your patent may not have been considered by the USPTO (United States Patent and Trademark Office) when they accepted your application. But, that doesn’t matter in patent infringement claims. If your patent isn’t impenetrable in terms of infringement claims, you will always have to be prepared for potential patent infringement claims.
The easy way to avoid this constant fear of patent infringement claims is to conduct thorough prior art searches before and even after filing patent applications. But, many inventors and companies fail to conduct thorough prior art searches for various reasons –
- Not a Legal Requirement:S. patent lawsdon’t legally require patent applicants to perform prior art searches. That’s why many companies skip prior art searches before filing patent applications.
- Professional Patent Attorneys Charge a Lot:The cost of hiring professional patent attorneys to conduct prior art searches on your behalf can be huge. They may even exceed the costs of drafting and filing patent applications! Exhaustive prior art searches require a lot of time, experience, and dedication. Most patent attorneys, even the ones who work for private companies, don’t have the skills to conduct thorough prior art searches in cost and time-effective ways.
- Inventors Unwilling to Pay High Fees:A chunk of the fees that patent applicants pay to the patent office goes to patent examiners who perform their own prior art searches. That’s why many inventors feel that paying twice to have professionals perform prior art searches isn’t cost-effective.
Why DIY Patent Search Doesn’t Work
Inventors and companies that avoid performing prior art searches because of these reasons typically adopt DIY approaches. Before filing their applications, they conduct prior art searches on their own. But, such searches conducted by non-professionals typically don’t discover the most relevant prior art. In the world of inventions, “multiple independent discoveries” happen all the time.
Even today, there’s a high chance that patent applicants will find prior art references in co-pending applications. These are the patent applications filed within two years of the other patent application’s filing date. Since the public isn’t allowed to see co-pending applications in patent offices, even professional patent search experts can’t guarantee 100% success. Overall, it’s fair to claim that people who are not trained on conducting prior art searches always perform worse than professionals.
How Third-Party Search Companies are Solving these Problems
Companies that are actively building diversified patent portfolios partner with professional U.S. patent lookup experts. These third-party search companies specialize in performing prior art searches. They employ patent attorneys, patent examiners, and other experts who are specifically trained in searching techniques.
- Cost-Efficient – Compared to corporate patent attorneys, third-party search companies perform prior art searches for much lower costs.
- Search Strategies– These experts formulate prior art search strategies. They search on countless different databases using combinations of keyword searches, name searches, classification searches, etc.
- Different Types of Searches– Third-party search companies perform different types of searches to determine the novelty and validity of their clients’ patents in different ways. Some of the types of searches these experts perform include – novelty searches, validity searches, clearance searches, and landscape searches. Combining these searches gives patent applicants or holders high-level views of the industry they operate in.
The leading third-party search companies also analyze the search results to analyze the vitality of their clients’ patent claims. More importantly, they have a clear understanding of the global patent landscape. They’re always up-to-date with the latest compliance requirements, be it a new USPTO law or a new announcement from the Export Administration Regulations (EAR).
These skills enable them to defend their clients’ patents in the most informed way possible. Their understanding of innovation-specific legal issues, recent trends in technology, and the filing activities of their clients’ competitors help their clients face fewer rejections from patent examiners.