Patent Search: Performing It Yourself vs. Hiring a Patent Attorney

A study of the industry allows us to outline the state of the art, on the basis of which unique inventions can be developed. And checking the degree of novelty of the object allows to conclude on the potential patentability of the result of intellectual activity, which leads to saving time and money for the future patent holder. The most effective way to carry out the designated actions is to conduct a patent research.

In accordance with paragraph 3.1.1 of State Standard R 15. 011-96, a patent research is defined as: “Studies of the technical level and development trends of objects of economic activity, their patentability, patent freedom-to-operate, competitiveness (efficiency of intended use) on the basis of patent and other information”[1].

By definition, patent research can be considered as a study of the market of available technical decisions and its trends in a particular area, in order to analyze and predict possible ways of development of the field under consideration.

The main source of such research is a special patent information. According to the information presented on the official Internet portal of the Federal Service for Intellectual Property: “Patent information is information about inventions, utility models, industrial designs and trademarks, declared as objects of industrial property and/or officially recognized as such by the patent office[2].”

Sung Woo Hong of the World Intellectual Property Organization (hereinafter WIPO), points out that this kind of information should include: “...not only the content of published patent documents, but also bibliographies and other information relating to patents for inventions, inventors’ certificates, utility certificates and utility models[3].”

Thus, it can be concluded that patent information is the most comprehensive and up-to-date range of information known in the field of scientific and technological solutions. In addition, it can be added that patent information is a tool, the use of which is important at all stages of the life cycle of the object of technology, i.e., from the beginning of its creation, namely from setting the task for R&D and choosing the direction of activity to the end of the life cycle of the patented technical solution, i.e., its exit from the market.

Depending on the person that conducts patent information research, it is possible to distinguish the following ways to conduct a patent search.

• Independent patent search.
• Analytical research conducted by a specialized consulting organization.

During the independent research, the company may use open and public databases of patent offices, which contain up-to-date information on the patented objects, and also registers of information on the intellectual property objects applied for registration. In addition, it is possible to use paid search systems and commercial platforms with aggregated data and various tools for advanced and comprehensive searches. As a positive aspect of the independent analysis of patent information, there can be a reduction of financial costs.

When a third-party company carries out patent information research, the search work is carried out by another organization at the request of the firm planning or carrying out the R&D.

As practice shows, enterprises introducing innovations and using the objects of patent law in the vast majority of cases prefer to use the services of specialized companies offering to conduct patent searches. This state of affairs is due to the following circumstances.

• Patent research uses the widest possible range of available information, data and tools.
• Information search and analysis is performed by skilled specialists, who can make a reasonable conclusion on the degree of similarity of the compared objects and the probability of a threat in case of a collision of the rights of the owners of the compared intellectual property objects.
• If necessary, employees of the consulting company can give a number of valuable recommendations concerning the improvement of the object to be patented.
• The commercial client of the patent information search receives a ready-made report on the conducted research, which reflects the background and justification of the obtained research, as well as the trends and possible ways of development of the considered field in the future. Thus, there is no need to conduct a detailed analysis of patent information within the organization which is engaged in R&D, which undoubtedly reduces the time and labor costs.
• Due to the wide range of the analyzed information, it is possible to conclude about the completeness and high objectivity of the research conducted by the consulting organization.

The above-mentioned circumstances encourage companies to seek a professional advice from a consulting organization with regard to patent search.