Peter Blasi, as a registered US patent attorney with professional search experience in chemical, biological, and mechanical arts, knows more than most about how to optimise for success in prior art patent searches.
Companies understandably strive for complete confidence in their searches, but they also face other pressures such as the challenge of finding patent searchers with the right expertise, and the need to complete searches as quickly and efficiently as possible. Despite this, Blasi believes that striving for perfection is a valuable goal.
“A 100% accurate prior art search is quite rare, but the goal for someone conducting a prior art search is to get as close to 100% as possible,” says Blasi.
The key to being as accurate as possible is not missing information that could be crucial – and the risk of missing key items in a prior art search is a concern for companies. Making an error like this could mean a waste of time and resources, accidental IP infringement, disputes, reputational damage, or even litigation. Therefore, the ability to be as confident as possible in the results yielded by a search is invaluable.
Three key factors
In the chemical and biotech arts, in which Blasi specialises, confidence in the results depends on three key factors. First, says Blasi, the correct databases must be used to ensure comprehensive information.
“Unlike the engineering, computer science, and wireless technologies, chemical and biotech prior art searches rely more on commercial databases and nonpatent literature. Because the nonpatent literature is not easily accessible through free sources, subscriptions to solutions like CAS STNext and Dialog Solutions are helpful to conduct thorough prior art searches.”
Secondly, a well-developed search strategy is key. Whether searching by text, classification, chemical structure, biosequence, or a combination of those, having a complete strategy will help avoid missing key pieces of prior art.
Third, Blasi advises companies to be pragmatic and to understand that, wherever the search is conducted, there will be limitations. Knowing the particular scope and coverage of your sources will help to avoid missing key documents.
“For example, a database like CAplus in CAS STNext is very comprehensive in the chemical and biotech arts, but what if the invention had an electrical component?” asks Blasi. “CAplus may not have the relevant patent and nonpatent literature that covers the electrical aspects of the invention”.
Being aware of this can help companies to mitigate the risk. For example, they can search the appropriate cooperative patent classifications (CPCs) and keywords in a full-text patent database, or leverage a few different databases for a more complete search.
Implementing these three key considerations will ensure companies can be as confident as possible in the results of their patent searches. Yet in the meantime, patent searchers are also under pressure to work as quickly and efficiently as possible – and rushing can lead to mistakes. In a world in which time is money, patent searchers need to balance efficiency with doing a thorough search.
Efficiency and expertise
The question of how to balance efficiency and thoroughness is one that Blasi hears from many professional patent searchers. When you could go on searching forever, how do you know when enough is enough?
“One basic rule is that if different search strategies are applied, and the same documents keep appearing in the results, that might be a good place to stop,” says Blasi.
“Also, searching the most comprehensive databases will help patent searchers accomplish thoroughness and efficiency without having to use too many different search platforms.”
Of course, the efficiency and thoroughness with which a patent searcher can complete a search may depend on their experience and skillset. Another question that Blasi often receives is: what level of expertise is needed for a patent searcher to do a comprehensive job?
According to Blasi, the appropriate technical background is a good start – such as a bachelor’s degree or an advanced degree in the technical field of interest. This is usually enough to understand the background and aspects of a particular invention.
Even so, patent searchers should work to become familiar with the technology related to an invention – for example, by reading the cited prior art in a patent application to gain insight into how that invention was developed.
“From my experience, those patent examiners that are efficient in searching for prior art are so because of their technical backgrounds, as well as their deeper understanding of the patents and applications in relevant classes and subclasses,” says Blasi.
This deeper understanding can be particularly valuable in spaces where searching is particularly complicated, such as the ribonucleic acid (RNA) space.
“Nucleotide and peptide searching is complex and nuanced,” says Blasi. “One of those nuances is searching for siRNA and RNAi, which is best explained in a Patent Lawyer article that Anne Marie Clark and I wrote a few years ago. In the article, we discuss how these molecules are represented in patents and indexed in databases.”
Meanwhile, companies must consider what approach they will take to freedom-to-operate searching.
Freedom-to-operate searches
The freedom-to-operate (FTO) search is an important aspect of the IP search process, but there are multiple schools of thought as to how best to conduct it. An FTO search can be expensive, so some companies prefer to conduct an initial search only. However, this could introduce risks if an additional patent is allowed after the initial search is completed.
With this in mind, is it better to conduct a one-time FTO search or ongoing FTO activity at various stages?
“The answer depends on the client’s need,” advises Blasi. “If a company represented by a client is looking to sell a product in a particular country, an initial step is to determine whether that product infringes another company’s in-force patent claims. If a one-time search is done, that might be enough depending on the length of time it takes the company to get the product of interest on the market.”
However, if there is a considerable amount of time between conducting the FTO search and the time the product gets to market, the risks increase. In this case, suggests Blasi, “the company may want to conduct another FTO search to make sure no additional patents were allowed since the original search was conducted.”
In any case, update searches are available – and these can be a convenient way to determine if any additional patents have been allowed after an initial search. If this is the case, the company may want to employ a strategy such as licensing the technology from the patent holder or challenging the granted patent in front of their Patent Office or court system.
Finally, Blasi suggests that a company may want to conduct an ongoing FTO for up to one year after the product was initially offered for sale.
“In the US, this is known as the on-sale bar under 35 USC §102, and this states that, if any patent applications claim the same invention that is being sold for over a year prior to filing, that invention cannot be patented,” says Blasi.
Multiple, or ongoing, FTO searches are a good way to comprehensively mitigate against risk, giving companies peace of mind that they will not be blindsided by an additional patent that they hadn’t been aware of.
Finally, in light of Blasi’s thoughts on how to conduct efficient and comprehensive patentability searches, what do CAS IP Services searchers do if a customer’s search flags up prior art?
“CAS IP Services does not offer legal advice when delivering results from a prior art search,” says Blasi. “The results are delivered without opinion and the client decides whether prior art is a problem, whether they want to file the patent application disclosing the invention as-is, or to design around the problematic prior art.”
