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In the last of their three-part series, Andrea Walsh and Cris Flagg of Express Search propose dynamic patentability searches during the patent procurement process to optimise cost-effective research strategies.
What could justify another article about patentability searching? The decline in patent quality has resulted from the US Patent and Trademark Office’s (USPTO) and other national patent offices’ lack of control or effectiveness in mandating the citation of the most relevant prior art during prosecution by the examiner or applicant before a patent is allowed.
The consensus is that patent reform has failed to adequately address this problem during patent procurement but relies on inter partes review (IPR) or national opposition challenges to define relevance of newly-identified references to decide the patentability and scope of claims issued to the patent owner.
"Consistently-performed dynamic patent research results in more informed decisions yielding quality patents, higher returns, and budget savings."
A patent procurement strategy should include replacing static, point-in-time prior art results with dynamic patentability searches that sustain their relevance, thereby allowing newly-identified prior art to impact real-time informed decision-making. To keep pace with this changing dynamic requires professional searchers to demonstrate their significance and value in reducing waste resources and cost-savings unattainable by one-time patentability search results.
Examples of the ‘penny wise, pound foolish’ principle relating to static patent research include:
- Investing in technical inventions that already exist ;
- Filing applications on inventions that are unpatentable by global statutes;
- Procuring low-quality patents that are economically or legally unenforceable; and
- Acquiring granted patents covering commercial products/processes that are invalidated by IPR or successful oppositions.
The failure of static patentability searches to yield valid patents, and the obsolete mindset that a patentability search should be conducted only when an application has been filed, are confirmed by industry and organisation data that show that appropriately-managed dynamic patentability searches significantly reduce the overall cost of obtaining a patent and eliminate waste by allowing selected personnel, such as IP strategists, business, marketing and research managers and scientists, to confer with patent counsel to formulate and be accountable for decisions based on the latest identified third-party prior art.
Quantifying cost reduction
The major sources of waste and the overall cost reduction realised by dynamic patentability searches are shown from industry data, provided by numerous patent search service companies and professional organisations:
- Cost of wasted product development and R&D efforts: 10% to 30% of budget;
- Total expense due to low-quality patents and associated IP risk or waste: $35 million to $75 million;
- Sunken costs saved by no-filing decisions: 30% to 50%;
- Granted patents invalidated in whole or part by IPR challenges: 40% ;
- Number of valueless patents never enforced or litigated: 95% to 97%; and
- Number of patents invalidated by global prior art if dynamic professional patentability searches performed: 90%.
This data emphasises that consistently-performed dynamic patent research results in more informed decisions yielding quality patents, higher returns, and budget savings.
Although dynamic patentability searching comes at an upfront cost that initially impacts budget, these expenses are transformed to cost savings that are magnified throughout the patent lifecycle. By spending money up front for searching and tailoring claims in view of the prior art, as opposed to reacting to prior art cited against the application by an examiner, applicants more than offset the added up-front expense through decreased costs in prosecution.
Amendments which narrow claim language to overcome prior art decrease patent value because the specification may not have been written to overcome the art and still provide sufficient scope to embrace commercially valuable subject matter. When all relevant prior art is cited throughout prosecution, a pristine prosecution record is created that adds further cost savings because the file history is of limited use by potential infringers in defence of enforcement proceedings or in patent invalidity proceedings.
In conclusion, judiciously budgeting for patent research may be the most cost-effective, pioneering act by patent owners in achieving patent quality and value.
Andrea Walsh is a senior patent analyst at Express Search. She has expertise in dynamic patent research and analysis in multiple chemical and biotechnology areas. Walsh provides innovative research solutions in molecular/cell biology, immunology, gene-editing and biosequence analysis. She can be contacted at: projects@expresssearch.com
Cris Flagg is president of Express Search. He has a master’s degree in computer science, focusing on machine learning/artificial intelligence. With 25 years’ experience in patent research, Flagg has developed landscaping analytics and software research tools that his company uses to provide research. He can be contacted at: projects@expresssearch.com
Express Search, patent procurement, research strategies, USPTO, IPR, technical inventions, cost reduction, patent research, informed decision making
