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An art search is an important tool throughout a patent’s entire lifecycle. Searches can comprise many parameters and provide necessary due diligence in, for example, patent prosecution, litigation, licensing, and mergers and acquisitions.
We were approached by a law firm to review a patent portfolio comprising approximately 30 patents generally directed to network routers and switches.
The patent portfolio was in pre-litigation, and we had previously performed some infringement analysis of the patents.
Over the course of review, issues of invalidity arose, necessitating a prior art search.
Because a comprehensive search can be more costly than necessary for a particular client project, we have developed a tiered approach to accommodate various levels of thoroughness and reliability in the search results. In particular, five tiers of search service are defined and compared on our website to allow for such accommodations.
In this case, since we were tasked with identifying key pieces of prior art that directly overlapped with the patented technology in a rapid and efficient manner, we recommended, and the client concurred, that a Tier-3 Search of global patents, non-patent literature, and products be performed.
Assigning the most qualified experts to a project is the first and most important step in the provision of our services. The technical subject matter expert (SME) we assigned holds a M.S. in Electrical Engineering and has over 25 years of direct industry experience in the field of network architecture design, development, testing, and standardization. A highly experienced search expert was also assigned to the project to work with our technical SME. The project was led by an IP attorney with extensive experience in patent drafting, prosecution, and due diligence.
While the seriousness of some invalidity concerns could be gauged by our SME, the more reliable approach involves combining the SME’s extensive experience with a thorough prior art search and review. As such, the next step in the process was to devise the search parameters based on the SME’s assessment of the patent portfolio.
Key search terms were extracted from the patents-at-issue by our highly qualified technical SME. The search terms were developed into search strings by our patent search expert, who filtered and compiled the results. Other search parameters (e.g., classifications, etc.) were also determined in collaboration between the technical SME and the search expert.
Note that in higher tiers of our search service, we add an iterative process to fine-tune the search parameters to provide the most relevant search results. That is, once the first iteration of the search results is compiled as described above, our technical SME would review them for relevancy. Any anomalies and irrelevant search results are analyzed and search parameters are updated to fine-tune the search towards the more relevant references. The search results would then be compiled and reviewed again. This is repeated a number of times until we are satisfied that the search results are as accurate as can be. Here, since a Tier-3 Search was chosen, this iterative process was not employed.
Our streamlined search processes provided the most relevant references. Since the law firm was primarily interested in prior art directly overlapping with the patented technology, as part of the Tier-3 Search service, we reviewed and provided a list of the top 10 most relevant publications based on the technological disclosures and/or the claims provided therein. A full list of all relevant search results was also provided as standard in all our search services.
Because we were able to provide a succinct list of the 10 most relevant references, questions and concerns regarding validity were rapidly alleviated. The client subsequently requested additional prior art searches on the remaining patents within the portfolio, outputted in the same format. Depending on project needs, our search output can be customized to fit specific requirements.
In conclusion, the success of this search project is owed to the following factors:
- Employment of a highly skilled and experienced team, including a) an industry veteran as the technical SME to define search parameters and review search results, b) a search expert with extensive experience in searching patent and non-patent literature globally, and c) an IP attorney to guide the search process and generate the search report.
- Development and use of a highly efficient search procedure that combined the skills and experiences of the various experts effectively.
- The dedication of the GHB Intellect team to meet and exceed client expectations.
About GHB Intellect
Whether a client is seeking to develop, sell, license, or assert a patent portfolio, GHB Intellect has the right resources to enable business objectives to be met. Our experts comprise active industry leaders who are up-to-date and proficient in the state-of-the-art technologies and practices in order to provide the most useful and actionable consultations to firms and individuals. Our work is highly respected by our clients and their associates for being accurate and thorough. Please contact us to learn more about our IP monetization capabilities, including litigation support.