Attorneys, Are You Getting Quality Prior Art Search Services?

Whenever one gets into a problem, the right thing to do is to identify and apply the best solution. However, one can’t decide if a solution is best unless it is compared with other available solutions.

This is applicable across the industry where every client is dealing with a service provider and needs a benchmark to check if s/he is using the right solution. Now, the common way will be to try out every service and then analyze/determine which one suits you best.

That might not be the best approach though.

Is there an alternative?

Yes. But before we divulge it, please confirm whether you get the following questions in mind when you receive a validity search report –

Are these the only results or can there be more?
Have they provided me the best results?
Have they explored every possible area?
Will it be fruitful to give them more time for search?

If your answer is yes, things are about to get interesting. Read on to find how.

It is difficult to answer the above questions but if you can compare solutions of your service provider, you can get the right hints. In order to save you from trying out multiple services, we came up with an intermediate step.

We prepared statistics of our output on validity searches performed between Jan 2015- Nov 2015. You can use these statistics to compare the quality of service rendered to you by your current service provider(s).

Analysis-

In the graphical representation, green signifies the percentage of projects having results disclosing all the features as per client’s requirement i.e. ‘X’ references. It may also comprise of Y or A references.
Blue represents the percentage of projects which comprise additional/novelty disclosing results lacking in at least one feature i.e. ‘Y’ references. It may comprise of A references too.
Sky Blue bar portrays the percentage of projects where only the concept related results i.e. ‘A’ references surfaced during the search.

We categorized the searches into three categories on the basis of time allocated to it.

Quick Validity Search: This is the type of search on which we spend 30 to 40 hours. Clients, in general, prefer such a search for checking the strength of a patent for Inter Parte Review.

We had a success rate of 45% for such projects conducted during Jan 2015 to Nov 2015. 50% had novelty disclosing results that lacked, at least, one clause.

Standard Validity Search: Here we spend 50 to 80 hours on the search where the objective is either a strength check or an IPR for patents already under litigation. As per the requirement, special strategies are tailored to execute them well in the stipulated time while ensuring the best results.

As per the analysis, we found a result for 47% of projects. For 51%, we had novelty disclosing results lacking, at least, one feature that was overlapping with the patent under the scrutiny.

Extended Validity Search: These are the ‘do or die’ projects (this is what we call them internally) where we are allocated 100+ hours. A client allows us to go to any extent to get what he wants. Strategies like reverse engineering, physical search, are employed. Sometimes an inventor is approached and even met in person. Various libraries are explored to get that one concept which can lead to a killer prior art. Special efforts are made to access various documents not available online. More often, these use to be litigation level cases where a client doesn’t want to leave any stone unturned.

We have a success rate of ~100% for such projects.

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This is how good we are in prior art searching. You can use our results to benchmark your service providers. In the next article in the series, we shared statistics of how good we are in the Patent Monetization game. You can check our numbers here – How good you’re in IP Asset Monetization?