When intellectual property (IP) professionals in industry or their patent attorneys need to find specialist information relating to patents or registered designs they call on the services of Search-a-patent. Dene Parker, managing director of the firm’s UK operations, explains more about the company’s work.
Intellectual property (IP) and innovation are the driving forces behind many of the UK’s most successful companies, as well as some of the newcomers that are joining the IP100. Professional search results are a crucial source of information to make sound business decisions.
Research and development (R&D) is an extremely expensive process, but it is vital. Nobody wants to invent the wheel twice or waste time and money on unnecessary litigation, which is why Search-a-patent has designed a process to maximise the return on R&D investment by structured IP development models.
Founded in Sweden in 2007, Search-a-patent set up its UK operations in April 2016. The company is already dealing with some of the country’s biggest patent attorney firms, as well as several major industrial players.
The process the company has designed begins at the very start of the R&D journey, when there is just an idea on how to solve a problem and before an actual product takes shape. “At this pre-project stage, a feasibility check is undertaken,” explains Dene Parker, managing director at Search-a-patent’s UK arm. “During the feasibility check, a client will: establish what it wants to achieve; establish how it will achieve it; what present rights it holds; what rights it needs to license or buy; what it needs to develop; and potential risks, markets and infringements.
“We answer those questions by conducting a ‘state of the art search’. This is a market analysis essentially showing how other inventors have approached the same problem. What other technical solutions are out there? Are they better than your idea? What are their strengths and weaknesses and what infringement risks are you likely to incur with the development?
“Based on those answers, management can decide whether to stop the development or proceed to the next stage. If, through our findings, the sensible thing is to stop now then at least this decision has been taken at an early stage and not following a huge investment in the actual development or production process.”
Avoiding expensive mistakes or diversions is an important part in the R&D process, allowing companies to focus on where they can get the best value for money. Weeding out ideas that won’t work can also save businesses large amounts of time.
“If the findings are favorable, we then proceed to the development stage, where the novel features of the product you intend to invent are defined,” Parker continues. “Based on these, we would then conduct a ‘novelty search’ to determine the potential patentability of the product.
“The results of this search lead to an IP evaluation and the IP strategy around the invention. Do you proceed with a patent application or keep it as a trade secret? Do you need to license in technology to support your patent application? If you proceed with a patent application it would be sensible to engage us, at this moment in time, to carry out a ‘patent watch search’. This monitors new patents in the area of the technology and your competitors.
“We now enter the pre-production stage, where you define the product and the production process in greater detail. You then instruct us to carry out a ‘freedom to operate search’. You may have a successful patent application on the novelty features, but other product details or the way you intend to manufacture the product may infringe existing patents.
“Following the clearance from our freedom to operate searches’, your new product is launched and we move to the post-production stage. Here you would continuously ask us to conduct patent watches on your competitors.
“In addition, we would carry out patent landscaping’. This shows the market development trends as visualised in a technology landscape.
“The comprehensive system that I’ve described for every stage of the R&D process is suitable for companies of all sizes. It is just an efficient model on how to maximize the return on your R&D investment.”
Parker points out that another huge advantage of using Search-a-patent is the unique way that the company presents the search results through its own software tool, “Reporteditor”. This displays the results in a concise and clear customised frame, with all the information categorised under appropriate tabs including full access to all available information on the patent database.
“Many of our competitors will perform searches, but will send back the results as an ineffective Word, PDF or Excel document and will include too many irrelevant hits that are cut and pasted into the report and link customers to, for example, Espacenet, which IP professionals then have to wade through,” Parker explains. “With Reporteditor, you receive the results of a search all in a single online report with information categorised under appropriate tabs and designed for collaboration and effective work between IP professionals.
“With other systems, you usually have to open up a spreadsheet and then click again to open up various PDFs. Our search results are presented in a clear and concise way – it’s all designed to save you time.
“As a partner at one of the tier-one law firms in London put it, ‘The less I pay for a search, the more work I have to do’.
“She also added that this is crazy as she is the most-expensive part of the process and she can hardly charge her client for hours looking at documents provided, many of which turn out to be irrelevant. Instead, we carefully filter out the irrelevant documents and only present what you need to see.
“Our services are sometimes more expensive than our rivals, but that’s because we deliver a higher-quality service.”
As well as expanding into the UK, the business is also targeting the sophisticated IP markets in Germany, Israel and the United States, principally in California.
“Search-a-patent is big enough that you know you’re getting a high level of expertise – both among the experienced patent staff in Sweden and the search engineers in Israel – yet small enough that you can pick up the phone and speak to one of those experts,” says Parker. “If you ask one of the big American companies to carry out a search for you then it will disappear into a black hole – you’ll get the search results but you won’t be able to ask questions of the person who carried out the search.
“That expertise is important because patent searching should be done by a qualified and experienced patent engineer. Up until fairly recently, the UK Intellectual Property Office provided a search service, but it pulled out of the sector once private companies started to enter the market.
“When I sit down and show patent attorneys or people in industry what our system can do then they’re very impressed. They tell me that they’ve not seen anything like it before.
“A lot of people may think that patent searching is only relevant for big companies. But it’s relevant for the small business around the corner too – we can help anybody who has IP or who is developing a product.”
Another popular option is the ability to fine-tune searches once they are underway. The patent experts and searchers at the company will quiz their clients in-depth so that they make sure they understand the brief; once the search is underway and results start coming in, they will then liaise with the customer to check if the search strategy needs to be refined, depending on the early results.
The firm was formed by Zack Amir, who came from an engineering and product design background. Amir was joined by Claes Pantzar, who was head of patent department at the Swedish Patent Office before going on to be chief executive of Zacco, one of Scandinavia’s largest firms of patent attorneys.
They created the company with former patent attorneys Richard Lettström – who was also chief executive of Zacco, a senior partner at patent attorney firm Hynell, owner of RWL patents and an examiner at the European Patent Office – and Peter de Bellmond, who was one of the Swedish patent office’s senior examiners, a patent specialist at Zacco and the owner of IPS Ltd, a patent search and analysis company.
The group also includes New-tone and Bycite in Israel, and Patentest in the United States. New-tone is the home of the group’s search team and is made up of 12 scientists and patent engineers with expertise in all the required technology fields, including pharmaceuticals, medical technology, high- and low-voltage electronics, automotive, information technology (IT), aerospace, marine, robotics and others. New-tone also handles sales in Israel and in the US through a subsidiary in California, while Bycite is the group’s R&D company, which developed Reporteditor and Autosuggest.
“I like the idea of the IP100,” adds Parker, who was one of the speakers at the Global IP Confex in London back in March. “We should be very proud in the UK that we are a country that’s known for innovation.
“We are known for having small start-up companies that grow and get somewhere. We have a high-level of entrepreneurship in the UK, which is matched by innovation, so I’m very pleased to be on board with the IP100.”
For more information contact Dene Parker at email@example.com
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