Legal Notice – Patent Infringement!
Without proper due diligence, it’s quite easy to infringe another’s intellectual property. Instead of playing ‘IP Russian Roulette,’ knowing the boundaries you must work within is critical in the patent world: starting off with an effective FTO search!
Like any searcher working in the Pharma and Biotech research space, I have searched and analyzed a lot of patent literature while conducting FTO searches. With the ever-increasing patenting activity and patent information out there, a linear patent search is not enough. Identifying the best approach and strategy for FTO searches is a clear role of an IP specialist. It makes all the difference between a good FTO search, and a poor, inefficient one.
Three key questions: What? Where? How?
- ‘What’ defines the boundaries of the search. This clarifies our understanding of the product or process in question. What is the product or process in question and what problem does it solve? What are the core/essential or non-core/non-essential subject features of the product or process? Do we need to limit the search with practice/application areas? How broadly or narrowly are the subject features defined? What are the relevant geographies? Are we looking at allied or alternate features of a product or process for circumvention options?
- ‘Where’ defines the tools and techniques to search and analyze patents for an FTO search. Where to search, and retrieve patents from? Should we include multiple data sources and data types (e.g. text, sequence, structure, CAS number, etc.)? Which sections of a patent should a searcher analyze? Where is the subject feature disclosed – claims or description?
- ‘How’ defines the difference between a novice searcher and an experienced searcher. How does an experienced searcher review a pile of patents to assess relevancy? How does the decision-making process work? How do you decide which one to keep and which one to discard?
In my experience, these questions act as tools for capturing the key terms related to the product or process exhaustively, defining the scope, and assembling multiple search concepts for the search. A good start here is when 50% of the FTO search mission is already accomplished!
- Experienced searchers use the right tools and implement an analysis framework
The FTO process involves reviewing and assessing thousands of documents. So, it’s imperative to take a structured approach to this review process to assess relevancy. In assessing the right databases, defining the search boundaries, and formulating the right search concepts, an experienced researcher uses a time-tested analysis framework to streamline the process.
Typically, a searcher reviews one patent document after another within the data set to determine which discrete subject features in the document being reviewed and the invention under investigation have in common. The new key question is now: “Is this patent relevant?”
Consequently, screening the appropriate sections of the patent document to conclude if this should be shortlisted or omitted is critical to the analysis process. For certain studies, reading the claims section helps in determining the scope of the patent, as it discloses the novelty and inventive step of the invention. This approach is specifically useful in infringement/clearance searches where the objective is to locate the patent references that address specific subject features. The subject features must be addressed and supported in the description section of patent specification. So, careful reading of a description section reveals much about the relevancy of a patent reference to the research topic. Also, claims may be directed to only one embodiment, method, or article, and might not recite subject features addressed in the specifications. There is a possibility of filing subsequent applications with new claims and expand the claim scope.
- Experienced searchers define the ‘key features’ and clearly outline the search boundaries
Identifying and defining the key features of the product (or process) is a critical step toward effective decision-making in the evaluation process. Misalignment at this step reduces overall search quality.
An experienced searcher uses the 3Cs model (i.e. clarity, communication, and confirmation) to define the scope and formulate appropriate search strategies. This way, they can answer the key questions which are now:
- What is the core feature?
- What are the secondary or non-core subject features?
They put in lot of focus on defining features of the topic in question by breaking down the technology into several elements or process steps. Searching for all the components together is insufficient for clearance/infringement search, because patents that claim fewer than all the components may well have an impact on clearance/infringement search. The critical step is to access whether one should go ahead with a single component, two components, or all three. Another key point is to assess how broadly we should define the components?
Searching for all components individually may yield a very large data set to be analyzed (i.e. high recall). So, conducting combination searches for core and non-core components is important, as is conducting searches for individual core components.
To ensure high quality, the searcher should also evaluate alternate ways to broadly describe the core component, and sometimes narrow concepts also.
- Experienced searchers can interpret the claims accurately
Understanding the claim language is critical to assessing the relevancy of patents. In fact, high-quality clearance/infringement search relies on the searcher’s knowledge of patent laws and their claim interpretation skills.
A single word can alter the relevancy of a patent reference, so special care must be taken for transitional phrases such as comprising versus consisting when interpreting claims.
- Presenting research and analysis
Defining subject features and creating a feature matrix helps in analyzing the patent reference and assessing relevancy. It also acts as a tool to define the relevancy matrix, where relevance can be assessed based on the presence or absence of features. The patent ranking is another value-added feature which helps to determine which patent reference is similar to the subject matter under consideration (i.e. all or most of the features are present), helping to prioritize the findings.
Balancing act : coverage versus risk
With experience and practice, a searcher mixes the right skills and techniques for optimum results. Using the right tools (search concepts, databases, etc.), defining the features and boundaries of the search, and accurate review of the patent specification helps to avoid FTO search pitfalls.
As a searcher, I use these four points in turn to conduct an effective FTO search for failsafe infringement prevention. This means my client can now enter the field of licensing deals, invalidation route, design around the patented features, or the product or technology is ready to be commercialized.
In the next post in the series, we‘ll discuss a framework that helps strikes a balance between research coverage (which defines recall) and risks associated with it – R&R Framework. We’ll also discuss scenarios when we face budgetary challenges when conducting FTO searches.
