PATENT RESEARCH
Expert-guided research can increase the quality of analysis, says Cristopher Flagg.
Patent analytics is a powerful tool, and in patent research we beta test each one, using a wide variety of these engines as standard. Analytics is still, though, just a tool and not a replacement for hand-craſt ed research conducted by an expert in the fi eld of technology. When used as a means to an end, analytics-based research leads to ‘fl y in the soup’ scenarios where valid research results are sullied by inappropriately included data. T is leads to the more serious question of whether appropriate data was excluded.
Hand-craſt ed, expert-driven research by
engineers with the necessary domain knowledge and industry experience is the key to fi nessing the right patent universe from which to begin analysis. Starting your analysis with a very focused search can draw the most benefi t out of your analytics tools and will get you more accurate and more relevant results than relying on analytics tools alone.
Automated correlation is not research
Patent analytics off ers both broad and detailed views of
trends and correlations which are
excellent for pulling information out of an existing set of data, but has limitations in creating the initial data set. Analytics tools are search engines based on an inference protocol that determines what belongs and what doesn’t belong in a given set. Many times the inferences made are based on blindly applied assumptions about the patent data which results in references being erroneously included or excluded—thus the ‘fl y’ in a perfectly good bowl of soup.
It is the point of inference that distinguishes analytics from human-based patent
research
wherein key word searching (non-automated data-mining) requires careful and strategic construction of
search criteria. T is requires
the researcher to have both domain knowledge and industry experience. Patent research is an iterative process, including such technical considerations as analogous methods and apparatus, and considering the contextual and conceptual relevance of a given technology. Analytics tools, by nature, have neither of these. If leſt to create the foundational set of data, analytics tools can miss very relevant prior art. You are leſt with either a very narrow set of
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results which could exclude valid art or with an overly broad set of patents which contains too many ‘fl ies’.
Simulating domain knowledge can be attempted through the use of industry specifi c thesauri, but they are not readily available and need to be updated with every piece of research. For example, the term ‘bucket’ in turbine technology has a diff erent meaning when used in mining technology. Both can use the key word ‘bucket’ for completely non-analogous technologies. An analytics tool will not be able to adequately remedy this distinction and will either include or exclude references to the detriment of the patent universe being created, resulting in an increase in delay and cost to the case.
Eliminating the fl ies
A hand-craſt ed, focused set of patents, ranked by relevance, can eliminate the ‘fl y in the soup’ phenomenon entirely. An expert researcher can navigate the nuances of a disclosure that are too subtle for analytics tools, while adjusting the scope of the research to meet the client’s direct needs and provide a strong set of foundational references. Irrelevant or inappropriate references are removed at the outset, thus any text-mining or manipulation of this customised data set will be highly benefi cial for analysis. More time is spent scrutinising highly relevant art and constructing stronger arguments.
An extra pair of eyes
Expert-driven research also off ers the benefi t of a second or third pair of eyes on a given case. At Express Search, for example, researchers report to at least one supervisor who reviews the results of research in every detail, sometimes honing them and adjusting the scope and focus to address the client’s disclosure better. With a second and third pair of eyes viewing each piece of research, quality control requirements are met and questions regarding interpretation of disclosed material are brought to light for the benefi t of the client.
T is perspective is highly valuable given the oſt en tight deadlines in draſt ing and fi ling. Perspective of interpretation and quality control is not something that can be fi ltered for in an analytics only-based search.
The best of both worlds
Expert-driven research off ers a thorough and cost-eff ective
route that can be easily used
in tandem with analytics tools. Once the springboard set of foundational references is procured, dropping them into an analytics tool
can yield additional useful information upon which to base opinions or arguments.
For many practitioners in the US, whether in-house or external counsel, the new AIA requirements demand a greater input of research and analysis. T is is particularly true with regard to post-grant proceedings.
The cost of caution
T e costs associated with hand-craſt ed research are far less obtrusive to overall case cost than the typical analytics subscription. For example, with Express Search, we regularly cap fees based on client budgetary requirements, off er bulk discounts and basic ordering agreements. Free amenities with research, such as integrated assignments and non-patent literature work, increase the value added signifi cance of an expert-driven patent search in the near term.
In the long term, customisable patent research with an expert researcher and reviewer can save tremendous amounts of money and time, limit rejections and office actions, avert infringement concerns and triple damages, and help to draft strong validity arguments for a portfolio. A good landscape/whitespace search at the outset of R&D fund allocation can focus development down the most profitable and patentable avenues.
T e subtleties of patent law and the clever use of language are why there is no automated patent or opinion draſt ing soſt ware. Likewise, it takes a trained professional to conduct a thorough and concerted patent search. T ere is a cost of time and money when critical references are missed during prosecution or litigation. T e use of hand-craſt ed patent research, with experts trained on the latest methods and tools, can help to minimise risk and maximise insight by providing foundational research and thereby eliminating ‘fl ies’.
Cristopher Flagg is president of Express Search. He can be contacted at:
Cris.Flagg@ExpressSearch.com
Cristopher Flagg is president of Express Search, Inc. Before joining Express Search, he was a roboticist specialising in artifi cial intelligence and computer vision for US Naval Research Laboratories Space Robotics Initiatives. He has more than 18 years in patent research and focuses on both research methodology and complex patent litigation research.
World Intellectual Property Review September/October 2013
91
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