I was taught the rudiments of patent searching in 1961 while in GE’s Patent Lawyer Development Program, and have done plenty of it since that time. I have always enjoyed the challenge of the search. “Never give up. It has to be there” has always driven me.

As part of my broad-based services to my clients, I have performed hundreds of searches of diverse types in support of my clients business objectives:

1. Invalidity of an asserted patent
2. Clearance to use or sell a product or practice a process
3. Patentability or preliminary assessment before submission to a Patent Review Committee
4. In M&A activity or in-licensing, assessment of the “grade of the ore” of a portfolio, or of the validity of a specific patent.
5. In enforcement litigation due diligence, assessment of the vulnerability of a patent to a validity attack.

An Unusual Collection of Powerful Search Techniques and Methods

I pride myself in being an out-of-the-box guy. Over the years I have collected, refined, discovered, and invented dozens of search techniques for efficiently finding the “mother lode” and killer prior art:

1. United States patents
2. Foreign patents
3. Technical literature
4. Prior uses
5. Commercial products
6. Offers to sell.

One of the methodologies I have developed, primarily for searching United States patents is described below.

Enhanced Citation Analysis – a Powerful Next-Gen System for Searching United States Patents

Conventional search methodologies have severe shortcomings.

U.S. Classifications
Professional patent searching at the USPTO search facility is typically performed by computer searching patents in selected subclasses patent by patent, in much the same way patents have been searched manually over the past 200 years.

Searching by US Patent Classification suffers from the class and subclass descriptions typically being general and/or vague, with the result that the classifications are often heavily populated with nonrelevant patents. Further, the assignment of patents to the 10,000+ subclasses is commonly inaccurate.

Keywords                  
Using computer keyword queries is the other popular method of searching U.S. patents. However, tests have shown that keyword searching is on average only about 25% effective in identifying the most relevant prior art patents. Reasons include:

• Useful search keywords may not be available because: a) there is no keyword, or b) it is in a different language, or c) the terminology has changed over time, or d) there are many non-standardized variants, or e) the topic is too generic to be useful, or too new;
• The keyword query is poorly structured, incorrect or non-conforming to search engine formatting requirements; or
• The keyword used is hyphenated, buried in a larger word, or for any other reason the exact character string in the query can not be matched.

Finally, search engines in use today often do not accurately implement a particular search query or appropriately prioritize the most relevant patents. The result is that dozens of potentially relevant patents may be lost in a mass of nonrelevant art.

Citation Analysis                   
A third method of searching U.S. patents involves analyzing the patents cited on the faces of US patents (appropriately termed the “backward”citations as they are earlier in time than the patent citing them). Most computer databases today enable identification of later patents that cite a particular patent (the so-called “forward citations”). These forward citations are sometimes also searched for leads to relevant prior art.

Review of forward and backward patent citations has been employed as a search technique for many years, however conventional manual approaches almost immediately grind to a halt due to the large number of forward and backward citations which are developed – a number which can quickly mushroom into thousands of patents. The amount of time required to review each patent overwhelms the process. The use of forward-backward citation analysis therefore is used today as a spot search tool, but has largely been abandoned as a core search methodology.

What Is “Enhanced Citation Analysis”?

“Enhanced Citation Analysis” also exploits the citations on the face of US patents, but uses a very different search system than in the past. This next-gen system employs an integrated set of computer/manual text and image recognition tools and process steps.

With this unique and powerful system a searcher is able to very rapidly and efficiently sweep across thousands of backward and forward patent citations, and in the process to effectively identify the most relevant patents. The forward and backward citations analyzed are typically located in hundreds of diverse subclasses scattered across the US Patent Classification System, including locations which are obscure and would not have been searched using conventional approaches.

Why Is “Enhanced Citation Analysis” Better Than Conventional Search Approaches?

Enhanced Citation Analysis is not burdened with many of the afore-mentioned shortcomings which plague keyword and patent classification searching. Rather, it avails with this powerful next-gen search system the list of prior art cited on the faces of US patents – a list amassed by a diverse group of contributors who know the most about the relevant prior art – the inventors and their technical associates, the acting attorneys, USPTO patent examiners, foreign patent examiners, and other interested parties.

The Enhanced Citation Analysis system for the first time makes citation analysis a fast, accurate, and highly productive search system.
 
Additional Powerful Methods Are Used to Confirm Validity Search Results

When appropriate, a confirming supplemental search is performed to gap fill or cross check the results obtained during the Enhanced Citation Analysis search phase. Having identified the most relevant subclasses and collected a broad set of keywords during the Enhanced Citation Analysis phase, use of these improved versions of conventional keyword and classification searches can sometimes be effective tools as they are not so plagued with the shortcomings of their predecessors.

Recent Success Story

Not long ago while performing a validity search for a client defending itself in a life-or-death patent litigation, I located a rare Swedish computer-driven product and sophisticated driving software which undermined a number of the allegedly infringed patents. I located an obscure Japanese patent that emasculated another key patent. The effect of these prior art gems was instrumental in forcing the plaintiff to accept a settlement reduced from nine figures to eight figures.

My Charges for Validity Searches Are Low

…So low in fact that I am often used to back up outside litigator’s searches without significantly impacting total search costs. I once found a bulls-eye commercial computer product in a validity search. My total fee was $1000. I have charged as much as $8000 for validity searching a group of patents in a complex technology. My fees for a basic validity search typically run approximately $2500 - $4000.

Searches which target exclusively foreign patents, technical literature and/or commercial products can also be performed. These searches are estimated separately.

And being a lawyer, my validity search work product is better shielded from discovery in litigation. 

Charges for Other Types of Searches

Typical charge for a patentability search of United States patents and applications is $500 - $800. Fees for other types of searches are based on an advance estimate.