Thumbs Up/Thumbs Down – The Value of a Pre-Filing Patent Search Program

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.

Brad is the Chief Operating Officer and a founding shareholder of Ensemble IP. Prior to starting Ensemble IP, he was Managing Director of the Patent Search and Innovation Intelligence Unit at CPA Global. As Managing Director, he led a global team with locations in the US, UK, Germany, Japan, China, Korea, Hong Kong, and India. He started his Intellectual Property career with Landon IP in 1999, ultimately serving as the President of the company until its acquisition by CPA Global in 2014.

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