09 Jun Finding The Right IP Research Provider

If you are a practicing IP attorney, you can surely attest to the fact that there are numerous IP research providers available for you to use for patentability, freedom-to-operate, invalidity, and landscape search needs. 

With options at your disposal, how do you know whom you can trust to give you the answers you need? 
This article explores the 8 key questions you should ask when evaluating your research provider.

1. What data security measures do they employ and is your data offshored? 
It seems every week that there is a new security breach involving the loss of sensitive information.  Law firms have a duty to ensure their clients’ information is reasonably protected and remains confidential.  It is important to ask your research provider its confidentiality protocols as well as the data security measures they have in place.  In addition, many research providers have a US office where its sales staff resides, but they then offshore the actual search work to lower cost countries.  For some research needs, this is acceptable, in others this might be problematic with U.S. export control laws. 

2. Does their technical backgrounds and expertise match my search need?
As someone with an electrical engineering background, I can confidently tell you I am not the attorney you want representing you on a chemical or biotechnology matter.  It would take me an inordinate amount of time familiarizing myself with the technology causing delays and cost overruns.  I would also not be familiar with the proper terms of art leading to a substandard work product.  This is true in the patent research space as well.  Beware of the patent researcher who dabbles in electrical, mechanical, chemical, and any other technology that might come their way.  You will get a much better result from someone who specializes in that field and has years of experience in the particular technology you are looking to research.

3. Database Resources?
Knowing what to look for is only half the battle.  Having access to the database that contains the information is the other half.  While some research providers have access to a fair amount of patent literature, few have access to fully machine-translated patent literature for foreign jurisdictions.  Without the ability to speak all the various foreign languages fluently, this information is worthless in their hands.  Rarer still is the research provider that has extensive non-patent literature database access.  Access to non-patent literature databases are extremely expensive, and if the research provider does not perform a large volume of searches, it is unable to maintain this access without charging exorbitant fees.  Ask your research provider regarding their machine translated and non-patent literature resources and be afraid of the small shop with low fees as non-patent literature references often are the key.

4. Deliverable?
A key question to ask your provider is the format of their deliverable and how it makes your job in reviewing the results easy.  Prior to my current role, I was a patent litigator at a major law firm.  One of my clients had a relationship with a research provider they required us to use for prior art searching.  While this provider caused many headaches, the greatest problem I had with them was in their deliverable.  The deliverable consisted of a stack of printed out patents with no indication of what claims that particular patent was directed to nor where within the patent the key language resided.  I would spend countless time reading and rereading a patent only to draw the conclusion the patent was completely irrelevant and included in the stack by mistake. 

5. Customer service?
There is nothing more frustrating than a non-responsive or inattentive service provider.  If you request a quote and the provider takes more than a business day to respond, move onto the next one.  If they cannot be quick in trying to get your business, they are certainly going to be hard to reach when you have a technical question or issue arise.     

6. Quality control?
Though you may have saved 50% on your search cost, if the results are complete garbage you actually overspent by 100%.  Patent research is a difficult and at times imperfect endeavor.  Find a provider that has multiple built-in quality control measures.  These measures should include more than one professional conducting the research and reviewing the work product.  A fresh perspective often catches the art that would otherwise be missing from the results.  Ask your provider about their process to determine if they are committed to multiple professionals conducting the search ensuring the best results.     

7. Satisfaction guaranteed?
In-line with customer service and quality control, what is the provider’s policy for when a research project goes awry?  From my experience in talking with those in the industry it is often one of avoidance.  The provider will avoid answering your e-mails, phone calls, etc.  and take the ostrich head in the sand approach.  If your provider is not confident enough in their quality control process and customer service to provide a free corrective search, quickly move onto the next provider.        

8. Timing?
Sometimes clients have unreasonable deadlines.  Sometimes you are swamped and are unable to initiate a project in a timely fashion.  In either case, a provider that can deliver high quality results quickly can be a career saver.  Though you can certainly ask a provider what their normal turn-around times are and get a sense for reliability, a long track record with references is much more convincing.  Ask your provider for names of others at your firm that have used them or a list of other attorneys you can talk to about their timeliness. 

Hopefully these questions will enable you to select a research provider that you can trust and rely upon to provide you with consistent high-quality results that furthers you and your clients’ objectives.