After speaking with a number of IP practitioners within both industry and private practice about using existing technology, we thought it would be useful to report on the state of platforms used. Are the tools at their disposal are good enough, or what, if anything, can be improved to make the overall experience better for them and their clients?
A good starting point is to list the common platforms that IP professionals use to search for patents and managing them. This is not an exhaustive list and is a combination of paid for and free to use software.
- Anaqua Patent Search Services – combines insight with well managed processes and services to turn intellectual property into a competitive advantage
- Derwent World Patents Index – database which allows up to 3.6million records per year to be added
- Equinox – software specifically designed for IP teams worldwide
- net – launched in 1998, it was to “revolutionize public access to international patent information”
- GenomeQuest – seen as the industry standard and is the largest repository of sequences cited in patents
- Google Patents – free to use with the ability to search patens on terms, date, assignee and inventor
- Orbit Intelligence – dedicated to patent research and analysis
- PatBase – extensive database that you can conduct a citation search on.
- PatSeer – an AI driven approach to searching, analyzing, reporting, collaborating, and managing patent data projects
- PatView – enables the ability to search on commercial patent databases from over 100 countries)
- Patentscope by WIPO – free access to 83million patent documents from multiple participating patent offices.
- PatSnap – allows a visual and analytical overview of IP portfolios to determine risk and reach management decisions that align with business strategy and future opportunities
- PatentTracker- a patent register monitoring service used by legal / IP departments
- PQAI – an initiative of AT&T, it provides a simple way to run prior-art checks
As the above is not an exhaustive list, the immediate thoughts are there are so many different types of software to use and there is not one uniform platform. Whilst there is an argument to say this is no bad thing, for lawyers and attorneys across IP, this is a professional nightmare. There is no consistency and if anything, there is an overabundance of technology available (albeit not all will be fit for purpose)
Concerns from patent professionals:
Having spoken with patent professionals, it was consistently referenced that technology should be there to simplify processes. If they need to trawl through several databases and use multiple pieces of software, then this goes against that sentiment and creates additional problems that the technology is meant to aid.
A large part of making their life easier comes simply down to the interface with the user. Most of the platforms mentioned above are quite complex and not user friendly at all. It makes it difficult to keep track of patents. Examples do exist where tools have been developed to track prosecution status which enables
With that being said, there has been the introduction of tools that track prosecution statuses, such as PatentTracker, making it easy to comply with inventor laws (depending on the jurisdiction) These tools will automatically submit a claim that has to paid, directly to the law firm / individual in question.
A number of those questioned for this article commented that there is a lack of technology that suitably brings together all the component parts of the process from search to filing. This is deemed to be the next big evolution for existing technology.
Current platforms and software require extensive training to properly implement and use the technology, which is a huge time investment. During the life cycle of a patent attorney / lawyers’ career, it is highly likely they will be having to re-train themselves on moving to a new firm that does not use the same software.
The biggest difficulty when it comes to processing patent applications, and to a certain extent, trademark applications, is that the terminology can often vary. This hampers a search as a catch-all search will not necessarily capture the correct information and can leave the client / firm exposed to infringements and potentially serious litigious action taken against them.
One individual I spoke with raised an excellent point. They were comparing patent searches with other industries; in this case it was the recruitment world. By default, certain industries incentivise you to submit the correct information. For example, if you are interested in a new role, you will go to the website, fill in the form and submit your CV. All of this is relevant purely for that submission.
In the patent world, it is very much the reverse. There is no correct pre information to digest. You are relying on hundreds, if not thousands (and beyond) individuals inputting the correct information across different jurisdictions. This is something that cannot be managed properly unless technology changes.
Unfortunately, nobody is arranging the data in a way that can be accurately processed. As it stands, professionals use different terminology for things that really should be categorized in a consistent way. This must change to generate accurate searches.
There are further barriers when it comes to accurate translations incorporated into existing software. A majority of this is currently outsourced to companies who will translate on their behalf. Again, surely this is something that existing platforms should look to incorporate? Whilst a few platforms have this offering, it goes back to the original points about user interface which can be complex.
The way forward?
Arguably the greatest changes have been the introduction of the cloud for data and the EPO now offering online filing. These are only baby steps though, and until there is an algorithm or software that can capture all the relevant information, IP practitioners are still some way off harnessing the potential upside of technology.
With the advancements in big data, storage, and AI we are nearing a point where the increased demands and expectations could be successfully met. It will greatly enhance the experience of client and patent professional whilst de-risking what is a highly litigious market.
Inhouse patent teams differ greatly in terms of size and resource. Historically, there used to be inhouse research teams, which in some cases, circa 100 people, conducting multiple searches on existing patents and freedom to operate. Nowadays, it is more common that we see leaner teams which in-itself points to the fact that some technology solutions are working and have reduced the need for headcount. This provides further validation that technology solutions can impact established norms and improve efficiencies.
The conundrum faced by leaders in this space; do you want a user friendly platform that is accessible but lacks many of the key end user requirements, or do you want a platform that lacks the front end user functionality but offers additional elements such as; compiling reports, covering annuity payments, hosting electronic files etc.? If the latter, then end users must grapple with what is best described as a complex system whilst also being unsure as to whether searches are deep enough to fully inform their views. We feel that there is a long way to go for existing systems can be fully relied upon to meet the needs of IP and patent professionals.