April 28, 2005
Patent Searching
Rethink'rs - we received this email message - any thoughts?
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I am not a patent lawyer by trade but find the topic interesting and try
to keep informed. I became curious about this issue after seeing a few
of the websites that offer this type of service and comparing that to
what my colleagues have told me the typical fee is for a physical patent
search that so many of the "big" firms still use. Is it the norm in IP
practice to still physically send a person down to the USPTO or is that
a practice that has fallen largely by the wayside. My suspicion is that
much like other areas of the practice of law, the use of physical
searches is somewhat of a vestige and tool of older attorneys who don't
really think about efficiency or cost effectiveness for their clients.
This stems also ties in to the discussion on your other website
(rethink(ip)) about the billable hour and the evils that concept
entails.
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RE: Patent Searching
I've never seen a review of patent searching services.
I can't opine on what the industry does...only on what I do (for simple mechanical searches). I use a patent searcher in DC who does the physical side (determines appropriate classification and then digs through the PTO paper files...old school). He does it very economically (again, simple mechanical applications) and sends me the results (usually the 5-10 best patents he finds) by email within a couple weeks. If he doesn't knock it out I usually spend at least a little while doing my own keyword search supplementing his results.
I guess we still use old school for simple mechanical 'cause it is so economical (and we can pass the savings on to our clients).
-- Steve
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RE: Patent Searching
Interesting questions -
I started in Chicago, so we would fly out at 6am, do searches all day,
and fly back that night. Can't do that from Oklahoma.
We also hire a searcher in Washington DC to do our searches -- for
mechanical inventions where the applicant can use any number of terms,
searching electronically by keyword is almost useless. Chemical, bio
and electrical - we can do most of that over the Internet and do keyword
searching.
My practice differs from Steve somewhat - most of my inventors are the
experts in their fields (bio and chem) and they are usually the best
folks to be doing searching and review. As a consequence, I don't do
much searching prior to filing anymore -- they would know if there was
anything out there and we err on the side of filing an application and
seeing what will come out of it. I try not to foreclose the option of
protection on the front end of things.
The PTO has available on-site in Virginia an electronic database of
images where you can "flip" through the mechanical drawings of patents
one page at a time. If they ever make this available online -- it will
be a breeze to search classes of mechanical patents and look for prior
art. Until that time, there really isn't a better way to do a thorough
search online.
A couple of my clients have done the electronic route - they got crap
back. I have received some interesting emails from search firms in
India and the Canary Islands - offering to do electronic searching for
prior art. I haven't used them yet -- but I am thinking about giving
them a whirl just to see what they come up with.
-- Douglas
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RE: Patent Searching
And the questioner wrote back:
Thanks for the responses. This is a topic I've been curious about for a
while and even contacted one of the patent search companies at one time
inquiring as to how they could do a thorough patent search and offer
patentability opinions at cost so much lower than what I understood to
be the cost of hand searches. The response was that they have
catalogued everything in the USPTO on their databases and feel that they
can do at least as good of a job, if not better, with computer searches
(I don't know if they use keywords or whatever) as someone doing the
physical search. When pressed on the cost issue, the response was that
they offer the search services as a "loss leader" in order to open the
door for the possibly more lucrative patent work. An interesting, and
somewhat candid, response.
But, that left me with the question, if this theoretically more
efficient method of doing searches is "better" then why do patent
practitioners not use it more often in their practices. The answer from
the patent search service person who I started a dialogue with (an
attorney) was that the more expensive hand search method used by large
firms was used because "that was the way they've always done it." I
gave some credence to this response as I know in my own practice area
there are many things that we do not because it is the best or most
efficient solution but it is the one that the lawyer has become the most
comfortable with. I had first approached the cost of a patent search
with a colleague of mine who works for XYZ Firm who told me that they
typically charge in the thousands for patent searches. That led to my
curiosity about how the online services, if they are on the level, can
offer the "same" service at such a reduced rate and eventually led to my
questions to you.
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RE: Patent Searching
Let me go on a rant...
It doesn't make sense to spend "thousands" to have a patent search done
when a patent application may cost $4-7K to prepare and file (thus that
might explain why small metro patent firms have much cheaper patent
searches...the apps themselves are cheaper). At some point it becomes a
gamble...the risk of prior art /cost of the patent search vs the
application cost (what % added to the cost of the patent application is
worth having the search done???).
Thanks again for the input and post ideas.
-- Steve
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RE: Patent Searching
To fully round out the circle, let me offer this:
In many art areas, the most relevant art may come from sources other
than the USPTO databases (think chemical, biotech, etc). The electronic
services that merely index the USPTO sources are completely missing
these other sources (as are "hand search" techniques conducted at the
PTO).
My position is this -- every invention is different. Some may justify a
search (a hedge on the gamble to which Steve refers), and some may not.
Some may only need a quick electronic search of USPTO-based info, while
others may need a more comprehensive look that includes non-USPTO
sources.
The attorney's role, in my mind, is to help the client make a decision
on "the gamble" and, if a search is in order, match it with the most
appropriate approach. All while keeping expenses in mind.
I hope this adds to the already fascinating discussion.
-- Matt
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RE: Patent Searching
I totally agree. This discussion clearly illustrates how complex the
issue is. I've started a MindManager map on the topic (I'm learning how
to use MindManager)...I'll work on it with Matt and Doug to see what we
can come up with. [remind us in a few weeks and we'll send you
the completed map]
-- Steve
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