March 2019 Newsletter

Vol 12, Issue 1

Predicting the Future with Patent Searches

By Thomas R. Knight

Patent searching is a form of due diligence that can not only help protect an investment, but also reduce the risk of infringement and help to spur new innovation.  Developing and protecting intellectual property has many associated costs, including R&D, brand cultivation, legal expenses, and the opportunity costs of foregoing other projects, to name a few.  Understanding the probability of obtaining (or avoiding) asset rights early in the product development cycle improves the efficiency of this process.  Furthermore, early insight can identify new opportunities to trailblaze in greener pastures altogether.

There are generally three types of patent searches: patentability, clearance, and landscape / competitive monitoring.  

Patentability Searches

(Can This Thing Be Protected?)

Patentability searches seek to determine the likelihood of obtaining patent protection for a particular invention.  After a patent application is filed, a Patent Examiner will attempt to find pre-existing (prior art) references showing that the applied-for invention is already known, or is an obvious combination of what is known.  Pre-existing prior art includes patents and patent applications, but also publications, items for sale, and anything that has ever been known, by anyone, anywhere in the world.  A patentability search identifies the prior art that could prevent a new patent from issuing before investing the time and cost in preparing and filing an application.  This upfront knowledge can also avoid the time lost in pursuing a path unlikely to lead to protection (particularly as applications can take two years or more to be examined).  Additionally, the scope of protection can often be improved by framing any prior art in the best possible light upfront.

A patentability search is particularly advantageous if:

  • there are similar products and/or many competitors in the field,
  • the technology is well established and new improvements are subtle,
  • budgets and/or timelines do not permit pursing a long-shot,
  • exclusive rights are required to ensure a competitive advantage, or
  • patent protection would yield a particularly high value (i.e., worthwhile to maximize scope by presenting the prior art in the best possible light upfront).  

Clearance Searches

(Is There a Risk of Infringement for Doing This?)

Clearance searches seek to identify existing patents, as well as any pending applications, that may present a risk of infringement.  In this manner, a clearance search seeks to avoid intellectual property rights rather than obtain them.  A lack of knowledge is not a defense to infringement and the cost of infringement defense and damages can be great (although knowingly infringing can result in up to three-times the damages).  However, if competitor patents are known in advance, those rights can often de designed-around.  This both avoids infringement, and creates the possibility of creating new innovations in the process.

A clearance search is particularly advantageous if:

  • the field is highly competitive with similar products and/or many competitors,
  • there are many patents in the field,
  • competitors are known to assert intellectual property rights against others, or
  • there is high exposure risk (i.e., high product volume or price tag can mean high damages). 

Landscape Searches and Competitive Monitoring

(What Are Competitors Doing?)  

Landscape searches seek to identify where others have obtained protection in the past, and what direction others are heading in the future.  For example, a search can reveal whether there are many patents protecting a particular field or technology (i.e., the field is “crowded”), or whether there is room to innovate and carve out exclusive rights.  Likewise, since it is often best to file patent applications before products are released, landscape searching can forecast a competitor’s latest features ahead of time.  Additionally, trending may reveal changes in a competitor’s IP strategy, such as an increase in applications filed, filing in additional countries, or expanding into a broader array of technologies.

A landscape search is particularly advantageous if:

  • the entire field is relatively new,
  • newly entering an existing field,
  • the field is rapidly changing,
  • budgets and/or timing require pursing protection having the greatest possible scope, or
  • there are multiple strategic directions within the field, and there is a competitive advantage in pursuing a different direction than competitors. 

Similarly, competitive monitoring helps businesses to develop and maintain proactive business strategies.  For example, a particular competitor may be monitored to proactively identify any new patent applications or granted patents.  This may be conducted on a quarterly, monthly, or weekly basis, depending on the frequency of filing and the speed of innovation within that field.  In short, competitive monitoring provides the latest information available, offering insight for prediction and a faster response.

Competitive Monitoring is particularly advantageous if:

  • there are relatively few competitors within the field (or few “key” competitors),
  • certain competitors set the trend in the market, or
  • the product life cycle is long (i.e., patents are filed long before products are released). 

Patent searches are invaluable tools for predicting and planning for the future, both within offensive and defensive strategies.  In many cases, this information serves as an accelerant, amplifying investments in time and resources, while also protecting against the downsides of loss.  However, with nearly endless data to sort through globally, these tools too must be employed with precision and care.  Therefore, the optimal plan for incorporating patent searches into an overall business strategy must be specifically tailored for the budget and pace of the business, as well as the industry to which it belongs.


Ryann H. Beck and Emily M. Chilson Named Partners at Andrus

Andrus Intellectual Property Law is pleased to announce that Ryann H. Beck and Emily M. Chilson have become partners in the firm.

Ryann has a diverse range of experience relating to intellectual property matters, including domestic and international patent and trademark prosecution, licensing, and enforcement. Ryann has technical expertise in computer software applications, control systems, electrical and electronic circuits and systems, patient monitoring systems, medical devices and other mechanical devices.

Emily focuses her practice on domestic and international patent, design, and trademark prosecution. Emily has technical expertise in mechanical technologies, including engines and related control systems, wearable technologies, transportation-related equipment and sub-systems, machinery used in the paper industry, pumps and circuits, and metal cutting machines. 


Benjamin R. Imhoff Co-Authored International Trademark Association (INTA) Paper

Benjamin R. Imhoff co-authored a paper published in the INTABulletin by the International Trademark Association (INTA) entitled Guideline: Considerations regarding Identifications of Goods and Services in an International Trademark Filing Program. The paper consists of a new set of guidelines compiled by the International Classification (IC) Subcommittee of the Harmonization of Trademark Law and Practice Committee (HTLPC) of INTA. The guidelines are directed to in-house counsel, outside counsel and trademark administrators and provide an overview of the classification of goods and services with a view to international trademark protection. The guidelines identify areas of harmony among countries and regions in the classification of goods and services as well as the pitfalls caused by differences in the various trademark jurisdictions. By providing the guidelines as a hypothetical, context is given to the associated business decisions in a way that presents the basic considerations of trademark classification, but also offers practical tips for the experienced practitioner. 


Andrus Sponsors MBA's Judges Night

 Andrus was proud to once again sponsor the Milwaukee Bar Association's Judges Night event held February 12, 2019 at the Grain Exchange. The popular event allows MBA members an opportunity to interact with members of the federal and state judiciary as well as with other bar members.


Andrus employees support UPAF

In March, Andrus employees participated in a Workplace Giving Campaign in support of the United Performing Arts Fund (UPAF).