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Prior Art Search: business approach

Since the last two posts on patent search were more for individual inventors and inventors in general, now I will analyze benefits of the patent search to business units.

First Search - then invent...

The more I work with technology development, the more I see that young companies, which decide to invest in development of new products or solutions act as follows: they start making design (mechanical, electronics, enclosure, etc.), they build prototypes and test them, then if at any of these stages they face some technical challenge, what do they do? First idea is to ask around - at the nearest university, partner companies, known experts and perhaps searching on google. That's it - if so far no solution is found they take decision, that much more investment is needed for solving the technical challenge inside the company.

  Let's see what do they lose by skipping patent search...

Every new development consumes time and money, also it distracts from seeking of the final aim - to develop a new product or solution. For example, let's say the company decided to build a novel method and sensor for identifying condition of a food product. The method should be applicable in mass scale, like detection of virus or bacteria in vegetable, like it was very recently with the cucumbers in Spain and Germany. The company already had some experience in the food production and knew enough about e.coli an similar bacteria types, also they knew that there is a lack of effective means, but usually bacteria is detected with the biological antibody tests. They also knew some folks working with biotech tools for similar applications. So they went straight to them.

After making few unsuccessful tests the Biotech guys told that there will be a need for some hundred thousands of dollars and at least a half of year for comprehensive experiments. Since these experts confirmed that there are no tools today for this application, but there is a probability to develop some,  the manager of the company decided to take the risk and financed the development.

Now let's see what's happened: the company invested few hundreds of thousands of dollars into development of a new technology. During that time the cucumber product recall is ended, so the detection technology is not so relevant anymore and the company has to wait until a next 'event'. This might take years if not decades...

Let's say the development was successful, but the detection process now takes 1-2 days to identify the type of bacteria. That means you can not make real-time monitoring of the cucumbers as they are collected from the greenhouse because the product will lose some of its commercial appearance and freshness. So at the end of the day you will have a very niche application of your detection method in some food quality control laboratories rather than on-line test.

Now let's see what could have been done using patent search intelligence. The search query 'bacteria detect*' gives more than 5000 results in the Espacenet patent database, almost all of them related to detection of virus and bacteria. After playing around with some other keywords and classification, I figured out that there is non-Biotech method for fast and low concentration detection of virus and bacteria and label-free identification of it. Namely the relevant patents are: CA2668259; US2009303472; US2009082220; US2009149344. The method is called Surface Enhanced Raman Spectroscopy (SERS). I am not surprised that folks from Biotech field did not knew this method, since it is a toy for physicists, spectroscopists and some chemists. The method allows detection of low concentrations of bacteria and identification in just a few minutes. Seems like a perfect combination of features for the given task.

I bet that knowing this information, the director of the Company would have been making wholly different decisions and would save at least a half of year of its company's effort. The decisions might be to work with SERS sensor manufacturers, acquire some licenses and know how or entering into cooperation by offering Company's marketing possibilities and market access in exchange to the right to use the SERS technology, etc.

It seems that with this first example I have hit one of the most common plagues in technology development, which is carried out by non patent-conscious companies.

Other benefits

Businesses could also benefit from patent search in making these decisions:

a) where to invest. Acquisition of other companies is pretty much and pretty often related to patent portfolios that are owned by the companies to be purchased or invested to. Very recent example is Apple-led acquisition of Nortel's patents. Of course not many companies might accumulate patent pools of some 6000 relevant and valuable patents. However on a smaller scale acquisitions of companies are often determined by existence of patents.

b) formulate the big picture. WIPO database gives a very good summary about a number of patents owned by individual companies, which can provide very useful information about companies, which are already active in the field and those willing to enter the market soon.

c) risk assessment. Middle and big size companies are often cautious about patents when designing their products, while the small ones usually ignore the rules of the patent game, since there is not much the patent owners could get in a court. I guess I will have to write a separate post about that.

d) headhunting. When searching for patents you can always see the most active inventors in the field. In case your company's strategy is to hire the best ones, you might want to contact the guys under the 'inventors' line.

Now I leave here some space for your comments and sharing of experience. Please go ahead!