How to maximise the effectiveness of your FTO research – Checklist

post20141107Information research on freedom-to-operate is daily business patent research. But it should never be undervalued. Every single project somehow is a class of its own. And missing the tiniest piece of “public” information can have major impact on the success of your IP strategy.

So, standard guides and how-to’s do not really serve the need for distinct research strategy and brain power. But 10 basic rules might help to be more effective and successful …

  1. Asking questions will be crucial for success
  2. Include non-patent literature
  3. Choose the right information sources
  4. Dare to get external support
  5. Know peculiarities of sources
  6. Know peculiarities of content
  7. Have positive control references up your sleeve
  8. Ensure availability of specialist expertise for special topics and tasks
  9. Carefully interpret results
  10. Stay up-to-date

 

As a it could be of special interest, I added some tips to reduce your costs with FTO research at the end of this post.

 

Step 1 – Asking questions will be crucial for success

FTO research should not be like tapping around in the dark. With the words of a good friend of mine, FTO research should be defining the borders and specs of the football field (“playground”).

So, start your mission with asking questions. A lot of questions. From different angles and viewpoints.

  • What is the scope? What kind and dimensions of freedom do you need?
  • What do you really need to know? And how can you delimitate the search?
  • Who could have worked with the technology?
  • What sources of information should be considered beyond literature?
  • What databases need to be used and where do you find them?

As a patent attorney or research manager, feel mandated to give your information searcher as much background information and direction as possible. And allow him or her to bother and challenge you.

Jointly develop authoritative search keyword synonym groups as well as a sound search strategy, which is a proper balance between quality and quantity. Last not least do some early preview searches in database indexes while developing the strategy, which will give you an impression if your strategy works as well as on volumes.

 

Step 2 – Include non-patent literature

Sometimes it is helpful to think through the backdoor. Non-patent scientific literature can increase the certainty of your FTO. Is there any publication (scientific literature, common press) that might prevent a 2nd party application?

But consider the following peculiarities of scientific literature databases, please:

  • scientific literature databases are bibliographic (abstract) only
  • scientific literature can be searched efficiently only by year but not by date
  • citation analysis (who, where) can give you additional hint for your overall search

 

Step 3 – Choose the right information sources

There are public sources, e.g. for patent literature, like esp@cenetUSPTODEPATISnet, and with other national patent authorities.

Pro’s

  • free of charge
  • quickly accessible via the internet
Con’s

  • limited search opportunities
  • limited service only

You get what you pay.

Specialist information databases on the other hand provide “pre-digested” high quality information. Established vendors are STN, Delphion, Proquest Dialog, and FIZ Technik (in Germany).

Pro’s

  • editorial post-processing
  • added value (indexing, reviewing)
  • extensive and effective search functions
  • crosslinks between different databases
  • option of multi-file searches
  • substantial service and support
    (e.g. helpdesk, trainings, documentation)
Con’s

  • considerable costs (royalties)
  • professional search tools need
    training & experience

So, you pay what you get.

 

Step 4 –  Dare to get external support

External information specialists (agencies and freelancers) provide you a sound information research & analysis competence, a considerable level of flexibility, and – last not least – an independent viewpoint.

But there are a few things you might want to consider and check before working together …

  1. Does the external specialist demonstrate a provable level of professionalism, experience and reliability?
  2. Does the external specialist in addition to information research expertise also provide a particular competence in the technological field or subject of the project?
  3. How will your communication be organized?
  4. How is information security ensured?
  5. Do you have a confidentiality/non-disclosure agreement in place?

 

Step 5 – Know peculiarities of sources

No, I don’t want to give a lecture on professional information research. But again, there are some peculiarities of source databases, you should take into account when interpreting results.

  • database characteristics – consider differences in data origin, processing, update modes, and – subsequently – findability
  • database coverage – consider differences regarding the types of documents covered, the time period covered, publication regions covered, and languages covered
  • database language – consider different languages of content

Taking all together, most information professionals prefer to use multi-files searches (database clusters) instead of single file searches. But a proper level of experience is needed to not just get more, but to ensure that nothing relevant is lost.

 

Step 6 – Know peculiarities of content

Be critical regarding accuracy, completeness and timeliness of any search database content. All databases are full of errors, some created with introduction of the data, some originate from the original document already.

Spelling mistakes

… by patent applicant, by OCR reading, by misinterpretation of special characters with some languages, by data errors during processing. As a result, your keywords do not match.

Solution:
  • truncate your search keywords
  • use character masking
  • e.g. “er!thropo!tin*” matches “erythropoetin”, “erythropoétine”, “erithropoetines”, …

 Applications not using right terminology

… by patent applicant, perhaps intentionally. So, again your – right – keywords do not match.

Solution:
  • think beyond the typical terminology to find additional unusual synonyms for your search keywords
  • truncate your search keywords

Not helpful keywords

… that have multiple meanings or occur regularly but unspecific within the literature. E.g. “protein”, “cell”, “screen”, “agent”, some substance names, acronyms, etc. Those keywords can give you non-relevant hits and bothersome background noise.

Solution:
  • do not use these keywords with your search
  •  increase stringency by delimitation or combination
  •  limit search to single database fields (title, claims, e.g.)
  • use acronyms in combination with other keywords only

Filing dates

Several circumstances create problems with time period limitations used by your search. E.g. by the period of application, by the time gap between filing and database entry as well as by different characteristics of static and dynamic literature databases. As a result, you don’t get some publications you should.

Solution:
  • include “preview” databases with your search
  •  repeat search after 18 months to completely cover the time frame of one general application period
  •  monitoring

 Hidden applications and “submarines”

With some search strategies you might accidentally miss relevant publications. E.g. using IPCs in search profile increases stringency…. but might overlook applications that are located in exceptional classes. Another issue are unpublished US applications.

Solution:
  • try a search with excluding your IPCs of choice (“NOT”)

High numbers of hits

Solution:
  • check search profile for sources of “background noise”
  • check efficiency of family sort
  • go back to database index
  • with full-text databases, limit search to selected fields (title, claims, abstract, …)
  • increase stringency – further delimitation possible?
  • reduce truncations
  • reduce acronyms
  • use IPCs
  • create sub-searches

 

Step 7 – Have positive control references up your sleeve

Hold back at least one internal positive control (publication) that should be found by the search strategy. If the positive control(s) was not found, improve the search strategy.

 

Step 8 – Ensure availability of specialist expertise for special topics and tasks

Some types of FTO searches, like on bio-sequences, chemical structures or statistical analysis (competitive intelligence) – require specialized tools, special sources as well as particular knowledge and expertise of the analyst. It is vital to have all three in place!

 

Step 9 – Carefully interpret results

Here is a list of my recommendations with interpreting results …

  1. summarize results by family sort and/or removal of duplicates
  2. benefit from report functionalities of tools – e.g. text file export for printout or table export for subsequent sorting and easier post-processing
  3. keep references to full-text documents – e.g. links to free EPO, USPTO or JPO documents
  4. consider peculiarities of source database(s) of results – e.g. a full-text search does not necessarily give better results or ensure completeness

 

Step 10 – Stay up-to-date

To my opinion, it is not sufficient to just state FTO at a certain time point. It needs to be watched. So, monitoring comes into game. Most professional database providers offer alert functions for a given search profile, which automatically drop you a note to your mailbox once a new piece of information is available. It is a quick win to use this functionality. In addition, current awareness searches might be needed at larger intervals to complete the full picture. This approach also allows you fine tuning or search strategies, resp. the adjustment to a changed “football field”.

 

Special: 10 steps to keep down your costs

  1. Invest time in the preparation of your search strategy.
  2. Invest time in the preparation of your search strategy.
  3. Invest time in the preparation of your search strategy.
  4. In advance to database searches “play” with the index.
  5. If your search strategy does not work properly within the databases, stop immediately and go back to step 1.
  6. Do a multi-file search, put cheap databases first in the row.
  7. Avoid search steps for date or region.
  8. Be as stringent as useful.
  9. Use standardized preview formats for display of hits.
  10. Use family sort and duplicate remove.

 


 

This post is based on a presentation first given at the C5’s European FTO Congress, Munich, November 2006.

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How to find high-quality patent information?

zur deutschen VersionThe major challenge for most IP workers is to know where and how to retrieve up-to-date, high-quality patent as well as patent-related information.

Well, for simple searches regarding a known patent number, inventor, assignee, head title, etc. there are already a couple of easy-to-use Internet sources provided by national and international patent authorities. For example, esp@cenet (EPODOC), DEPATISnet and the USPTO databases.

Another promising source for basic searches – especially in the context of drug development – is DrugPatentWatch. But this one – as the ones following now – unfortunately is not for free.

For more complex information research, like comprehensive FTO, patent infringements, intended patent revocations, patent portfolio analysis, etc., more suitable tools for executing efficient and in the end successful searches are needed. In those cases patent experts consult highly specialized databases provided by database hosts like STN, Lexis-NexisDialog and others.

What is a ‘database host’? Hosts give a whole set of databases by various producers a virtual home. Their major advantages are that …

  • hosts give access to professional databases which cover improved, high-quality, reliable patent information,
  • hosts provide a common searching surface that enables the user to simultaneously search a bundle of selected databases,
  • you can always decide yourself which database(s) out of the whole set will be used,
  • the data fields are harmonized between the databases,
  • the data between different databases are crosslinked,
  • and there is just one bill.

The hosts major disadvantages are that they are not for free, and that you need to be trained in their specific retrieval languages. But these retrieval systems are essential for using the most powerful search and analysis tools. The hosts are already aware of that problem, and they try to win even those customers that are not used to retrieval languages. For example, they offer more and more search masks via Web interfaces. But to be honest … a search mask will never really be able to provide the same versatile functionalities a retrieval language does.

What host should I use? Most hosts set priority to a specific field of information. STN concentrates on scientific and literature information (biotech, pharma, chemistry, engineering, material science, etc.), Dialog on business and market information, and Lexis-Nexis on law and legal information. Interestingly, most hosts offer patent literature as this branch of specialist information is one of the most lucrative … shame to him who thinks evil of it. Delphion (formerly IBM patent server, now member of the Thomson Derwent Group) is the only host that offers just patent databases without the option to do cross-research with non-patent databases, but with extensive analysis tools.

You should also have closer look to the type of clearing procedure. With Dialog for example, you pay a flat fee in advance that expires after a year, independently if you used your account or not. Others, like STN Classic, calculate database usage time plus document royalties. Others, like STN Easy, have no time costs but slightly higher document royalties. Our recommendation for starting with host information searches regarding Life Science topics would be ‘STN Easy’, as this retrieval surface is more easy to use for beginners and the costs are comprehensible.

Finally, if you say “no, I do really not need to do also THAT”, you may consult a professional information searcher, called infobroker or information broker. Information brokers are experts in retrieving specialist information from various sources. Most of them are specialized to branches of businesses, and are organized in associations like the AIIP (Association of Independent Information Professionals) or the German DGI (Deutsche Gesellschaft für Informationswissenschaft und Informationspraxis).

In future posts I will go more into detail on pros&cons of specific databases and on proper strategies to get the most out of your research. Look forward!

Revised version of the article “Identifying High-Quality Patent Information”, originally published in June 2004 by Inside-Lifescience, ISSN 1610-0255.