I recently sat down with Myriam Davidson, Stratford Intellectual Property‘s Director of Engagement and resident analytics expert to discuss the advice she gives clients looking for insights about how to best develop their IP position.
Her first words to me were, “Everyone can search but not everyone can find”, which may sound like patent analytics are an unwieldy and potentially resource draining endeavour, but Myriam assures us that this is not so. She elaborates, “Making sure you have the right data set is key. Starting with the end in mind will ensure that your efforts uncover the most useful information, resulting in maximum impact.”
Patent searching is much more nuanced than simply uncovering patents that could be related to your idea and/or to identify competitor products. There are several reasons why an organization should consider including patent searching in their IP strategy budget.
Free tools are often great resources to establish a baseline but the wealth of information available can be overwhelming to the untrained seeker. An analytics expert can help to elevate your results by adding degrees of complexity to the queries and focusing on what will support your decision-making. Her guiding philosophy is the old computer science adage, “garbage in, garbage out.”
The key strategy when creating tailored search parameters is to balance the risk of missing important IP through too narrow of focus with the risk of too large a data set through too broad of focus. The key to finding that balance is partnering with a knowledgeable expert to help navigate the tricky world of keywords and patent classifications.
This is where Myriam comes in to help Stratford clients make the most of the information that is out there and to help them interpret and translate the results into actionable insights.
Searches should be geared to the type of information you are looking for and the outcome you are seeking. One size does not fit all – and your end goal will influence the searching mechanism you should be undertaking.
Depending on what strategy her clients are looking to inform/enact, Myriam recommends one of the following four searches:
Landscape
- What is it? This type of search can provide insight into the market and support your business and IP strategy by analyzing the patents that are most relevant to the field. Landscape searches have an extremely broad application and some of the insights you can glean are: types of players (competitors, non-practicing entities, collaborations, etc.), potential partners or acquisitions, how litigious the field is and what IP has been litigated or opposed, the global footprint of patent protection, whitespace opportunities, and expired patents of interest.
- When would I use it? To gain business intelligence and to leverage information to support R&D and product development. You can also use the results to help determine if there is patent protection that falls within Standards that you incorporate in your product
Patentability
- What is it? A patentability search focuses on the invention a company wishes to protect and seeks to extract a similar sample of relevant prior art to what a Patent Examiner might find. The primary goal is to be able to make an educated assessment on whether to move forward with the invention given what is uncovered.
- When would I use it? Before your patent application is fully drafted and submitted. The additional insights are used to provide guidance on how best to draft your patent. Typically, you would provide an IP information expert with a broad first claim, upon which he/she will develop a search strategy. If it is decided to move forward with the application, your patent agent uses the knowledge gathered through the search to draft the broadest specification and claim set possible.
It is possible to also use the results of a patentability search to speed up prosecution (and reduce costs) because you will be disclosing the relevant prior art found through the search to the patent examiner who then takes them into account during prosecution.
Competitor Profile
- What is it? As the name implies – it is a detailed look at your key competitors, what they are doing, who they are working with, and where they are focusing their investments.
- When would I use it? To gain competitive intelligence. Further, if your product is still in development, you can use the results to pivot your product development if needed. If your idea is further along in the development process, you can reduce risk by submitting relevant prior art with the intent of influencing their prosecution outcomes.
Freedom-to-Operate
- What is it? A search of patents with claims that are concentrated on your area of innovation focusing on the jurisdictions in which you are interested in doing business. It is accompanied by a legal opinion that assesses the risk of infringement for a product (it should be noted that a favourable opinion does not guarantee that you will not be sued).
- When would I use it? It is typically requested by boards, investors, and acquirers to help determine if an idea or product is at risk of infringing third-party rights. Maximum value is extracted when the product specifications are known (e.g., product launch or modification post launch) as any change to the product invalidates the results.
Myriam is quick to warn that analytics and patent searching should be approached as an ongoing facet of your IP strategy. The very nature of innovation means that things are always changing but also because a search done in a single point in time will miss the patent applications that are shielded by the 18-month publication lag. Even the most experienced or expensive searching expert will not be able to uncover them (This is not a bug, but a feature of the patent process to allow innovators the lead time to develop their product but that’s a whole other train of thought to explore for another blog post…).
When used with intention and the proper parameters, patent searches are a great tool in your IP strategy arsenal that can help you develop insights into strength, weakness, opportunities and threats of your IP and the IP closely related to your product/R&D.
If you have questions about how patent searching can be applied to your IP strategy, we’re here to help.
About Myriam:
As Stratford Intellectual Property’s Director of Engagement, Myriam has extensive experience in the areas of IP analytics and operations, client relations, and innovation management. An innovation strategist, Myriam specializes in intellectual property strategy, with a focus on in information management to fully utilize information sources to advance business objectives, drive innovation, identify market opportunities, and minimize risk.