Considerations and Tips for Conducting Intellectual Property Research – A Few Things You Need to Know

By Ben Bahavar Ph.D.,
Rosemarie Szostak Ph.D.,
Jeffrey Magee BSME, MBA
Senior Nerac Analysts, IP & Innovation

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Contemplating licensing an intellectual property (IP) search engine for your company? Here are some essential things you need to know.

Many search platforms are available in the market to conduct patent and non-patent research in support of freedom to operate/practice (FTO/FTP), patentability, invalidity, and other prior art searches. Companies interested in licensing an IP search platform, or alternatively, using the open internet and/or large language models for intellectual property research, should consider some critical questions that could erode their IP strategy if left unchecked.

To successfully implement any prior art search tool into your IP strategy, you need to keep the following things top of mind:

  • THE RIGHT PERSON(S): Will this person do this full time or are they one of your engineers/scientists assigned to the task on an ad hoc basis? How much time will be allocated to training on the platform and training in the intellectual property field?

    It takes a patent researcher 3 months to 2 years to become proficient.

  • UNDERSTAND THE TECHNOLOGY: The nominated researcher should have a suitable technical background, and thoroughly understand the invention(s) at hand.

    Are you willing to divert one of your key engineers or scientists from their work to undertake a patent search?

  • A SEARCH IS LIKE A RUBIK’S CUBE: The researcher should be familiar with IP strategy, and the implications for the search at hand. Novelty, freedom to operate (FTO), and state-of-the-art searches each have different objectives, and in turn, nuanced search criteria. Does the researcher understand the many elements in a patent document?

    Just because an IP platform can spit out information or a pretty graphic, this won’t necessarily mean that information is of high or even any value. It still takes a savvy researcher to digest the information, understand the relevance to the technology, and what it means to the research objective.

  • UNDERSTAND THE ART AND SCIENCE OF SEARCHING: Due to several software layers and complexities of patent and non-patent searching, researchers need to be active users of the given software. When this is not the case, many clients have expressed frustration with the search tool. As a result, they may end up missing key findings. Even at Nerac, our analysts consult one another if it has been a while since they last used the search platform.

     A deep understanding of the art and science of searching, alongside frequent usage of the particular software platform, is essential.

  • WHAT ABOUT AI? The reach of artificial intelligence (AI) and large language models (LLM) embedded in modern IP search software includes features such as semantic searching, claims summarization, and machine translation to augment the analysis process. However, AI search tools do not grant inventors and researchers license to bypass careful review of the subject matter.

    A skilled searcher unlocks must-know patent and non-patent content by applying classic search techniques alongside AI-enhanced features. AI is not a surrogate for research best practices.

  • CAN I USE THE OPEN INTERNET, OR GPT? The value that open internet searching provides engineers and scientists goes without saying. Although very new on the block, large language models (LLM), such as ChatGPT and Bard, have quickly demonstrated their ability to serve up remarkably useful content. While all of these are good tools for when your team needs to grasp a given subject area in a general sense, bear in mind that the search information is exposed to the world. Search providers (Google, etc.) are free to publish the search activity itself, sell it to a third party, and so on. Likewise, ChatGPT, and similar LLMs use your search information to improve the AI models. Your research might appear for the next person, such as your competitor, searching for similar content.

    Safeguarding your valuable idea, versus unknowingly disclosing it to the public, could make the difference between years of enjoying a competitive advantage, and becoming a commodity supplier. It may have happened to companies in your industry without them even knowing it. It was recently discovered that Samsung revealed confidential information using ChatGPT (link). While many companies are gaining awareness, many others remain unaware that their ideas have been exposed, or worse, lifted by others through the open internet. The United States Patent and Trademark Office (USPTO) explicitly forbids the use of open internet searches for examiners (link).

    How does your engineer or scientist ensure that searching doesn’t expose confidential IP?

So why use Nerac services if you can do the patent searching in-house?

Clients express to Nerac their general difficulty developing complex search criteria to tease out the information they need. They also cite confusion using patent class codes, struggle searching for legal status, or identifying patent ownership. The number one client concern is whether they missed vital IP.

Nerac’s clients who have patent search software turn to Nerac for support with clearance and novelty research requests, as well as other strategic objectives. Many patent law firms and in-house attorneys have come to rely on Nerac to obtain a must-see list of prior art so they can focus on legal opinion. They understand that Nerac brings search expertise, appreciates the technology area, and has extensive background performing strategic IP searches. Looking beyond patent publications, many companies also turn to Nerac for expert technical opinion, confidential primary research for M&A, and support for other business opportunities. Nerac’s non-patent research includes scholarly publications, trade journals, and competitor announcements, along with market and regulatory landscapes. To learn more or schedule a discovery call, contact us here.

About the Analysts

Ben Bahavar, Ph.D.

Ben Bahavar, Ph.D., advises companies focused on stepping out to adjacent markets where they could apply their core technologies in new ways. He brings particular insight by synthesizing information from technology evaluations (patent and non-patent), competitive intelligence, and market elements. 

Academic Credentials

  • Ph.D., Chemical Engineering, Clarkson University
  • M.S., Chemical Engineering, University of Maine
  • B.S., Chemistry, SUNY at Stony Brook

Rosemarie Szostak, Ph.D.

Rosemarie Szostak, Ph.D., advises companies on technology, patents, innovation and disruptive technology. She has 20 plus years of experience as a thought leader and analyst with broad technical knowledge in chemistry, materials and chemical engineering.

Academic Credentials

  • Post Doctoral Fellow, Chemical Engineering Department, Worcester Polytechnic Institute
  • Ph.D., Chemistry, University of California Los Angeles
  • M.S., Chemistry/Physics, Georgetown University

Jeffrey Magee, BSME & MBA

Jeffrey Magee, BSME & MBA, has 20 years of industry experience in the energy sector. To help guide company IP strategy and R&D spend – for both the planned and the ad hoc innovations typical throughout the product life cycle – he helps clients identify, secure and expand their intellectual property assets while defining market niches using engineering and business metrics.

Academic Credentials

  • B.S., Mechanical Engineering, University of Massachusetts at Amherst
  • Masters in Business Administration, University of Massachusetts at Amherst

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