All posts by : Brad Buehler

Whether or not you decide to file a patent application takes many factors into consideration such as time, cost, and filing strategy.  Ensuring you have all the information at your fingertips is of paramount importance in making a filing decision.  Proactively incorporating a pre-filing search into the decision process is a cost-effective way to increase the quality of patent applications and reduce overall prosecution costs.

A pre-filing search is designed to be a thumbs up/down, go/no-go tool used to help determine whether to proceed with a potential application and also having support from the bookkeeping for franchises to manage the finances effectively for completion of this process.  As one of the most important patent strategies for businesses, it:

• Is part of an invention review process
• Provides relevant information to the inventor or Patent Review Committee information upon which to base decisions
• Limits unintentional internal bias with an independent search related to the inventive concepts

Imagine if you could reduce your patent filings by 10% to 20%?

What amount of savings would that represent for your budget? Aside from the financial impact, there are additional benefits to establishing a pre-filing search program:

• Make easier/quicker filing decisions with a more complete view of the technical landscape
• Create stronger applications with better claim construction that take relevant art into account and result in stronger patents
• Limit the surprise of examiner-cited art that could have reasonably been considered during the application drafting process

The best pre-filing search programs are integrated with the invention review process and provide you a clear report that is easy for you to review and understand.  Here are some of the key questions to ask:

• Is the search process customized for each disclosure provided? Will the analyst select the appropriate mix of patent and non-patent literature to find the most relevant art?  What if you have a question and want to review the results with the analyst?
• Is the report easy to read? Does it clearly identify the inventive concepts and map them to the relevant art?  Can you request a custom report format that matches your requirements?
• How will you measure quality of the program? Is the “kill rate” the right metric for you?  Or is the reduction in §102/§103 rejections a better metric for you?
• How will this most easily fit into your internal invention review process? What turn-around time frame do you need?  Who will manage the program?
• How will you handle complicated disclosures or key inventions that warrant a deeper dive in support of a patentability opinion?
• Will the process be seamless whether working with the in-house patent counsel or designated outside counsel?

Whether your pre-filing search needs are staggered throughout the year or are scheduled on a routine basis, a close relationship with a partner patent search firm is vital.  At Ensemble IP, our team has vast experience in developing and administering pre-filing search programs that ensure you have the right information at the time you need it to make an informed filing decision.  Our consultative approach focuses on creating the right patent search process, the right reporting format, and delivering the right search  for your needs.  Contact us to learn more and let us work with you to design a pre-filing search program that is right for you.

It seems as if every time we turn around, there is a new search system on the market claiming to use Artificial Intelligence and Machine Learning. Furthermore, these are going to replace our need for a traditional Boolean search system. Though there is no doubt these AI patent search systems continually improve, we have found it difficult to quantify their performance against the more traditional search approach. Additionally, it is challenging to figure out where the systems can add value in the traditional patent search process since each operates in a black-box fashion with varying features and transparency.

In using various search systems for our daily patent searching activities, we were able to compare and evaluate these AI systems. We discussed the results in our important whitepaper which addressed this revolution and provided five key takeaways:

• Professional patent searching has only marginally improved over time.
• Companies have introduced periodic innovations to address these shortcomings with limited success.
• Early semantic search engines, crowdsourcing, and offshoring have failed to improve quality.
• A few machine learning tools have demonstrated real progress, but not as substitutes for humans.
• Lasting innovations will blend the work of human patent search experts with the best artificial intelligence tools.

The question still remains – Friend or Foe? The answer comes down to your knowledge of the system being used and knowing when and how to use it most effectively.

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Is it truly AI?

The use of an algorithm, such as creating a citation network, does not mean that there is AI in the system. Prior to subscribing to an AI tool, ask these important questions:

• What are the AI models used in the system?
• Does the system use supervised and/or unsupervised learning?
• How was the system trained? Was it trained in different technology areas?
• How is the system tested? What are the precision and recall metrics for the system?

Test the system before buying!

These systems are quite different than traditional Boolean search systems which are mostly differentiated by the data sources and user interfaces. You need to test the system with your typical use cases and compare the results with those generated from your traditional search methods. You want to know:

• How does the system determine relevance and how many “relevant” results does it return? A system that claims to return 80% of relevant documents in a returned set of 1000 is quite different than a system claiming to return the same 80% in a returned set of 250.
• Does the system’s definition of relevancy match with your definition of relevancy? This can be subjective, so you need to have a clear understanding of how you are determining relevancy.
• Is the system easy and intuitive to use? Is it easy to tweak your search?

Friend or Foe? How about Frenemy?

The right AI search system can be a good complementary tool and is most effective when used in conjunction with a standard search platform. We’ve found them to be most useful in the following situations:

• Researching the general state of the art
• When hitting a brick wall in your search process, they can help you uncover different and useful paths to explore
• To double-check your search results and avoid a surprise out of left field

As these AI patent search systems and the underlying technology change and improve over time, we are confident that they will become an increasingly important tool for the patent analyst. The less time the analyst spends searching through haystacks for those needles, the more time they can spend reviewing the references and applying them to the search at hand.