The first stage consists of the uncovering the innovation from engineers of company’s R&D departments, which is not always as easy as it sounds given that many engineers and scientists do not have real familiarity with patent laws, so they do not always appreciate what can and should be protected. Properly used, a quality search can be one of the most cost-effective and valuable tools a company can have to not only capture and create innovation, but also to avoid being sued for infringement. This dual purpose for a search is important to understand. A novelty search is intended to determine whether a patent can likely be obtained, but sometimes it will be quite useful to undertake a more comprehensive analysis of the search results to determine whether moving forward might result in a charge of patent infringement. An infringement analysis is more complicated and time consuming, but for some clients it will be worthwhile to pursue such a search in conjunction with a novelty search, or even outside of a quest to obtain a patent themselves.

1. It portfolio it is critical for business managers to understand the of importance of a search including what kinds of searches are available (i.e., domestic, international, novelty, non-infringement), why to consider search before filing patent application, when to get searches, who should conduct and review search, and how to strategically use search result.

2. After the relevant information has been gathered, the next stage requires the in-house IP attorney to go to work analyzing the search results and scrutinizing the rights, duties, and limitations in light of the current state of the law and the client’s interests. In this stage it also requires effective communication between the in-house attorney or patent practitioner and engineers from the R&D departments. Unfortunately, this communication is often times lacking, which will mean that any future work product will not be as good as it could otherwise have been.

3. The key is you want the innovator to be the captian of the project when it comes to the technology, not the patent practitioner. A patent practitioner is very good at drafting a legally appropriate technical description of an innovation and actually getting a patent issued, but you do not want the patent practitioner to be the one to decide what aspects of the innovation are most important. Communication is absolutely essential and the patent process must be viewed as a team effort in order to maximize success and value for the business.

4. One significant business reason for obtaining searches relates to product development. An analyzed technical opinion based on search result can be invaluable for evaluating the patentability of a potential new product, or a product considered for development. This is true because if after a search the field is quite crowded and only very narrow patent rights look potentially available it may be far more fruitful to pursue a different avenue. After all, innovating is on some level is as much about conserving funds and pursuing the best alternative. No company can pursue every innovation path,that would be too costly. So doing a broad based search to determine direction can be extremely helpful and will result in the wisest allocation of resources, which are always finite.

Strategies InFocus:

1. One significant business reason for obtaining searches relates to product development. An analyzed technical opinion based on search result can be invaluable for evaluating the patentability of a potential new product, or a product considered for development. This is true because if after a search the field is quite crowded and only very narrow patent rights look potentially available it may be far more fruitful to pursue a different avenue. After all, innovating is on some level is as much about conserving funds and pursuing the best alternative. No company can pursue every innovation path,that would be too costly. So doing a broad based search to determine direction can be extremely helpful and will result in the wisest allocation of resources, which are always finite.

2. Another strategy has been used to generate income, or generally speaking to monetize a patent or Portfolio. Is sometimes called a “picket fence” strategy. It is focused on obtaining relevant prior art based on search covering all practical alternatives to the company’s product line. The company would then file multiple patent applications and obtain patents, thereby building a wall around a market to prevent competitive market entrants. This aggressive strategy requires identifying the differences between the company’s patent coverage and approaches analyzed by prior art, which an eye toward what competitors are doing and how best to block competitors from encroaching on the space you wish to concentrate on moving forward.

The above strategies are effective means towards reaching a goal, but qualified analysis process based on search must be addressed to ensure proper execution. It is likely that any particular patent strategy may require different techniques, and different searches with varying scope and depth, but having quality input based on qualified patent search with comprehensive analysis of relevant prior art should be viewed as an essential aspect of any integrated patent strategy.