A Look Back at Patent Research in the R&D Community

Looking at the new patents searching capabilities on Engineering Village 2, I was reminded of the most patent intensive searching job of my career. About seven years ago, I was employed as an information specialist for an R&D company. Remembering the long and complicated process to properly research patents, the cost prohibitive nature of the tools available at the time, and the lack of control the R&D engineer had over their own work makes me think about how far the technology has come in seven years.

The company I worked for offered full-service R&D research for the development of any product that showed real market potential. The company was founded by three partners, a mechanical engineer, a business development executive and a designer. It employed over 70 engineers specializing in different fields: mechanical, electronic, plastics and others. I was hired to conduct research in areas as diverse as information gathering and analyzing in a range of markets including sales and business potential, to patents and trademarks. It was my job to conduct all of the research needed for complete product development. The products ranged from toys and electronic consumer gadgets to medical instrumentation. My task was to gather research to either support the project or recommend the company reject the proposal. Since the submission process was not formalized at that time, product outlines were presented in an haphazard way and ranged in techniques, target markets, and functionalities. This posed a real challenge for information gathering.

The fundamental requirements of my role were threefold. First, I had to quickly grasp the subject matter, second, I had to employ the appropriate database searches and third, I had to compile an extensive report that contained patent coverage, market potential and competitive intelligence. To conduct all these types of research, I had to find a vendor that best fit all of these needs by providing as many paid databases as possible within a limited budget. I needed marketing, business and technical information, especially patents.

Analysis and reporting had to be done manually, and at the time, there were very few analytical tools embedded in the prduct I had to work with and the ones that it had were too expensive to use on a regular basis. These problems were even more intense when searching for patent information. The vendor product I chose housed a world patent index and other comprehensive databases, but they were extremely expensive to use and anything but user friendly. My biggest challenge was to devise ways to reach all possible patent data before going online to search in order to keep the cost to a minimum. The first step in the process was to acquaint myself with the product proposed. Basic questions such as what it does, who are the targeted users, and what were its various functionalities had to be derived. Using the written proposal document and numerous interviews with both the inventor and the engineers, I attempted to identify as many key words as possible for my search before I ran the search. The next step in this exhaustive process was to search for these key words on free patents databases such as the USPTO and Esp@cenet in the EU patent office. These platforms were only helpful in examining whether the key words and concepts that I solicited were in fact capturing the subject matter at hand. Sample records from these databases were then taken back to the inventor and engineers to be checked for relevancy.

It was only when these key words and concepts were confirmed that I turned to search the fee-based patents databases for a comprehensive retrieval of prior art and technical specifications. These searches were constrained by time, the product's unit charges, and by the number of records to be retrieved since heavy fees were charged for every record printed. These printed reports were in a short format and only contained the patent number and title. When I felt that the utmost number of patents had been retrieved, I then went back to the free online patents databases to retrieve the text and images. I could never retrieve full text records from the fee-based patents databases, nor could I set up alerts via the platform due to the heavy fees that my company could not afford.

Even after the tedious process of gathering the correct records and documents was complete, there was still a big challenge to overcome. I still had to perform the analysis of my research. In most cases, patent searches resulted in big sets of records which although refined, could not be minimized to a handful of documents. Since I needed to submit a full report containing prior art and technical issues that had to be considered before development and market research, I had to ensure that all possible claims were covered. Products in market, manufactures, and worldwide sales were included since misidentifying a similar product or claim would have resulted in loss of money and time for the company. Therefore, all search results had to be gathered, read and analyzed for: country of filing, classification codes – for industry coverage and subject matter, companies and manufacturers (assignees), and of course, inventors. Key words had to be checked and re-checked to find all possible related and broader terms and then researched again if found to be irrelevant or not comprehensive enough. When I was finally confident that my research was exhaustive, a report would be submitted and a decision to develop a product was made.

When a product was accepted for development, my work with patent searches continued, since the product team engineering groups were seeking technical solutions that were presented in patents. Since detailed technical drawings and descriptions are one of patents’ greatest technical values, engineers would constantly consult them to find a solution for a technical problem at hand. Engineers constantly approached me with sketches of components and explained the problem and the solution they needed. Although I often tried to refer them to some of the free online databases, they constantly failed to find the specific patents that were needed. This was not due to lack of experience of the engineer but rather the inability of the databases to provide user-friendly interfaces to thoroughly search these platforms. A key word search can never get as specific as one would like it to be and lacking the right terms was always a problem. Translating a problem description into the correct terms to be searched was the most challenging task throughout this process. With no clear sense of how broad or narrow the subject, it was often a fishing expedition rather than a focused, precise search.

These challenges would have been minimized if engineers in the company could have had access to detailed technical records in a source that was easy to use and not cost prohibitive. The time spent on explaining, sketching, and going back and forth between my search results and the information needed would have been cut to a fraction of the time with a fraction of the effort. When I think about the hours spent on analyzing and configuring the patents data into a comprehensible report covering countries, manufacturers, products and markets, it would have been such an enormous help to have a platform that supported analytics as well as saved all the money spent on fees and extra charges.

For information about Ei Patents on Engineering Village 2, please see the article in What’s New in this edition of Ei Update.

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