I have an open question to ask any and all of you...

Lot's of us have 10, 20, or even 30+ years of experience searching patents which means we have our own ingrained tricks, techniques, etc. The problem I run into is trying to teach my tricks and techniques to new searchers. Teaching a person how to perform patentability searching (find each limitation, the more per reference the better) is relatively easy and invalidity work is even easier (find a specific limitation, preferably in context). But clearance searching is a different beast entirely. Time is the best teacher I've found, with most searchers having their "Oh, I get it" moment 6-18 months into working as a searcher. Does any one have specific ideas on how to speed this up?

My most successful approach so far has been having newer searchers approach the search in two parts. First, perform a mini-patentability search as of 20 years ago. Try and kill the concept/product/improvement with expired art. Whatever you can not knock out with 20+ year old art is what needs to be cleared. It makes the search a little easier since the searcher can review the specifications and Figures within the old art and then focus on just the claims in the newer art. Plus they have a better understanding of the technology and its evolution prior to carefully reviewing claims. I find this works very well in most mechanical areas and in developed chemical, electrical, and medical areas, but not so well in areas with no expired art!

One caveat to this general question: This is more directed towards generic requests to "Clear this whole thing" rather than the preferred "Clear this tiny improvement on a previously cleared product".

Thanks,

Dominic DeMarco
www.demarcoip.com

2 Comments

  1. Hi Dominic, I completely agree that clearance/infringement searching is the hardest concept for a new searcher to grasp.  If it helps, Intellogist hosts a wiki page for the community to add best practices related to infringement searching.  You can take a look at http://www.intellogist.com/wiki/Infringement_Searching_Best_Practices.  You're also more than welcome to edit the wiki (registration on Intellogist is required). 

    Thanks!

    Kristin

  2. As a second knock out step you could repeat the mini-patentability search for the last 20 years of pior art and transfer the results to the national offices register files and other legal status files as available in the online hosts. Focus to the patents that were refused by the examiners (EP/US). The arguments used by the examiner for refusing the application could also be valid arguments in a clearance search. This could further reduce the remaining area to be cleared.

    Please keep in mind that even though your mini-patentability searches clearly reveal that there should be no granted patents for the subject, they may very well exist (Examiner are humans as well). So even if you find arguments against the patentability of certain aspects of your clearance subject, I would try to find any granted/pending patents that cover this. In the case some patents show up that should not have been granted according to your mini-patentability search, you can warn your client.
    In this case your client can prepare himself for eventual litigation (seek appropriate representation and prepare documentation) after launch, or he can start opposition or nullity proceedings before launching the product.

    In the end, time and budget will decide. The knock-out first method is in my opinion a good method to come quickly to the essential part of the clearance search. But if time and budget allow for searching the 'knocked-out' subject matter to identify clearly invalid, but nevertheless granted, patents, I would prefer to do that and warn the client for the existence of these patents.

    Gerben