Business lawyers specialising in technology and intellectual property law, management and commercialisation

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How to be smart in patent search work

clockwork_orange" I viddied right at once what to do " says Alex in the 1962 book and 1971 film, A Clockwork Orange. Viddied is Alex's lingo for viewed, saw or realised. I had Alex's sensation this evening as I viddied a superb slide presentation titled "Web 2.0 goes social" credited to Jia Lynn Yang of Fortune magazine.

At once I viddied how it provides insights on conducting smart patent search work. This is a very real issue, including for inventors of software patents and business method patents.

Earlier today I had a phone conversation with an inventor client about how he might go about commissioning a patent search. His invention will be initially rendered in software and later as a hardware product. As an analogy, imagine if Apple first launched with iTunes, and followed up with the iPod and iTunes pre-loaded Apple computers.

Advising an inexperienced client about IP search work takes time. The conversation turned to how to gain from patent protection and avoid patent threats.

I talked to my client about the benefits, costs and weaknesses (sometimes hidden and substantial) of patent search work. The weaknesses can also appear in trade mark search work.

I emphasised the importance of avoiding search work that just produces a list of hits, ie a bunch of patents to review. I call this type of search work "hunt and peck searching". The phrase captures the image of a chicken hunting and pecking for food.

As important as it is to review such patent hits, it is also important to properly assess them. For that I've found it all too rare to come across professionals in the patent field who can clearly articulate strategic advice for a path through a patent maze, cluster or thicket. 

What's the big deal? If weaknesses in patent search work are not detected then an IP strategy built on them will be unstable. Worse case, your patent is worth less or worthless or you are checkmated by another patent after you've spent heaps.

Solution? One way of minimising these significant risks is to build a knowledge architecture about the specific technology or invention area that interests you. Historical knowledge helps, preferably lots of it.

With all this in mind I drove the point home today by providing my client with an analogy. I contrasting dumb and smart patent search work. I did this by contrasting the lifestyle benefits of an IP search farmer or herder against those of an IP search hunter-gatherer.

Tortured analogy? Well, maybe. So with the Fortune slide presentation this evening I viddied right at once what to do.

As you watch the Fortune slide presentation (linked below), note how it paints  the prehistory of contemporary social media in 13 slide starting from 1979. Collectively the slides start to shape an information architecture for online social media (AKA social networking, social networks) as an area of invention or technology.

Anyone seeking to patent in the area of social media will need to review and assess all of this. It's this type of high level contextual information that is missing in hunt and peck, hunter-gatherer, patent search work full of hits not analysis.

Do you agree? Comments welcome, especially if you've had experience with patent searches.

Slide presentation: Web 2.0 gets social


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