December 1, 2008

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On the Patent Hunt

Online Programs Streamline Your Patent Search

Spencer Sutherland

December 1, 2008

Inventors, rejoice! Patent searches have finally found their way out of dusty file libraries and into the Internet age. According to attorney Pete Malen from Salt Lake City-based intellectual property firm Workman Nydegger, patent searches have changed, and those changes can benefit your business. “Until recently, patent search programs were fairly unsophisticated, at least in my view,” Malen says. Traditional searches included making arrangements with a third party company to search through physical patent records and make a list of patents similar to your invention. “At best, the searches also included some preliminary analysis, but nothing in depth,” Malen adds. Now, myriad of online search tools have emerged, not only allowing access to a seemingly infinite number of patents, but also offering tools to help you make sense of the data., for example, offers tools that allow you to group patents by owner, review patent progressions or calculate how many patents are filed in a certain technology each year. Though there are a number of free search tools—from the U.S. Patent Office to the new Google Patent Search—more robust engines are subscription-based, ranging from hundreds to thousands of dollars per month. “[These programs] come with a lot of processing horsepower,” Malen says. “But you have to pay for it.” Reasons to Use a Patent Search Program For those with the budget, patent search programs can be an invaluable investment. Here are a few ways to justify the cost: 1. Competitor Tracking. A patent search allows you to see what patents your competitors are filing and give you insight into their portfolios and strategies. Understanding where others are heading may help guide your own strategy. 2. Patent Mapping. Mapping all of the different patents on the board allows you to see gaps not yet filled by current products or technology. This is a great way to find areas that are ripe for exploration. 3. Identify Business Opportunities. Patent searches can be valuable when you’re searching for products to license from other companies. Likewise, searches can help identify entities that could benefit from buying your product. 4. Freedom to Operate. Before bringing a new product to market, it’s nice to know if a similar product has already been patented. This is the best way to prevent being on the receiving end of a patent suit. 5. Safe Acquisition. Before acquiring another company, it is important to know what its intellectual property portfolio looks like and how its patents are situated within the market. 6. Litigation Defense. If you are sued for patent infringement, a patent search could be your best defense. A patent search may be used to find patents that pre-date the patent being asserted against you, thus, making the suit invalid. Not a Do-it-Yourself Job While you can go straight to the source for patent searches and analytics, the actual filing of a new patent can be quite challenging. A patent law firm can help with the details. In addition to helping clients with patent searches, a firm can help increase the likelihood of obtaining patent protection. After submitting a claim to the U.S. Patent Office, in most cases, “The patent office will say ‘based on our review of the work that’s been done in the field, it doesn’t appear to us that your invention is new’ or ‘it’s just an obvious variant of something that’s been done before,’” Malen says. Fortunately, that doesn’t have to be the last word. Often, refining the claims may be adequate to overcome the rejection. In other cases, it is necessary to submit an argument to the examiner, further detailing why the product is indeed different from other patents. The finalized claim verbiage is crucial to the patent’s life. “The claims issued in the patent are really what define your rights in that technology,” Malen says. “When you respond to the patent office, you have to articulate yourself in a way that won’t cause problems for you when you try to enforce that patent at a later time. Those sorts of things are discoverable and may impact your claims and the extent to which you can enforce them.” You don’t need to be a registered patent attorney to file or prosecute your patent application, but it often proves tricky. “There are some pitfalls and a lot of processes dictated by case law from the court of appeals from the federal circuit,” Malen warns. “Unless you are in tune with the developments and implementations with respect to those cases it is very possible that you could make a very serious error in attempting to secure a patent.” The Right Balance The key to successfully identifying and receiving patents is to take advantage of the availability of new tools without letting technology take control. “There has been quite a bit of attention devoted to search and analysis techniques. Those tools are powerful and have their place, but I’d caution people to be careful about over reliance,” Malen advises. “In the end, it’s computer generated data and not a substitute for human experience, judgment and insight. Perform some of your analysis before you can come to a conclusion of the direction you want to go.”
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