Patent-lifecycle-management-preparation

Following on from the previous chapter in our Patent Lifecycle Management white paper, which delved into what Patent Lifecycle Management actually is and why it is crucial for important patent-related issues such as maximizing the return on investment and reducing maintenance expenses after patent issuance, we are excited to bring to you our next insightful installment, which is going to explain the operations in different stages of the patent lifecycle, starting with the preparation stage. Over the coming weeks, we are also going to take a look at operations in the prosecution stage and then finally, the monetization stage.

The preparation stage typically consists of the following operations:

  • Prior Art Search
  • State-of-the-Art-Search
  • Deployment Strategy
  • Pre-Filing Analysis

A prior art search is usually the starting point of any patent searching activity. A prior art search helps us to discover what is already known and has the following purposes:

  • Check for novelty or non-obviousness
  • Further understanding of the technology domain
  • Potential for patent infringement
  • Invalidation purposes
  • Due-diligence

Additionally, there are different types of searches that can be performed:

Patentability Search

The most common search which, based on the information retrieved, is used to determine whether an invention meets the required criteria for being able to be patented or not.

Patent Clearance Search/Freedom-to-Operate Search

Used by inventors or organizations prior to going to market with a new technology or product.

The main objective of this type of search is to uncover and/or disclose patent applications that may or may not be enforced against the invention in the future, acting as potential “roadblocks” to the eventual commercialization or development of the invention or technology in question.

Validity/Invalidation Search

Carried out to pinpoint references that have the potential for questioning the enforceability or validity of a patent. A patent validity or invalidation search can also be useful for discovering any documents that may have been missed by the patent examiner during the patent application prosecution phase.

Patent Landscape Search

Usually performed to find out more about the conditions and circumstances prior to entering a new technological area for feasibility. This type of patent search is comprehensive and can be used for (to name but a few) reasons:

  • Discovering current and future competitors
  • Monitoring new innovation in your chosen field
  • Establishing which of your patents could be the most valuable
  • Uncovering interesting markets
  • Competitor research
  • R&D research

State-of-the-Art Searches are usually very broad and focus on a field of technology instead of a specific invention or product. This is a comprehensive search type that supplies the searcher with results aimed at providing more of a general understanding of any prior art in a particular field of technology. A state-of-the-art search includes searching patents, patent applications, and any publications related to the field of the art. A state-of-the-art search could also be performed to assist invention disclosure. The results are usually vast and offer an extensive rundown of the state of the art within a particular industry.

The search scope of a State-of-the-Art Search is typically anything between three to five years, this is due to the fact that the most interesting of technologies are usually the newer ones.  

The deployment strategy is similar to a regular business strategy, where the strengths, weaknesses, and activities of competitors are analyzed in order to formulate a plan to ensure that the filing of the patent is executed in the most efficient and cost-effective manner and that the patent filing activities are in line with the business model of the individuals and/or companies involved. The strategic activity is crucial to supporting the business in order to make the best data-driven decisions.

Invention Disclosure -> Analysis -> Decision

 

Pre-filing Analysis

The pre-filing analysis operation, in a nutshell, combines everything which occurs pre-patent filing. The main purpose of pre-filing is to establish whether or not a proposed idea has been previously disclosed in the prior art, meets the patentability criteria, and whether a patent can be granted for the proposed idea.

Additionally, pre-filing analysis can also help patent attorneys when preparing their drafts.

It is crucial to perform pre-filing analysis (especially to see if any prior art exists) due to the fact that if the said idea is not patentable, any funds allocated to the preparation of patent drafting and filing will be wasted.

 

Stay tuned for next week’s installment “Operations in Different Stages of the Patent Lifecycle: Prosecution.”