Patent Search Vendor : 30 Questions You Must Ask While Choosing – Webinar

Key-points covered in this webinar “ Make No Mistake: 30 Questions You Must Ask When Choosing a Patent Search Vendor” Session

• How do I select a patent search provider most likely to deliver the highest quality results?
• How do I select a patent search provider that customizes searches according to budget?
• How do I increase the speed of delivery of results?
• How do I select a patent search provider who partners with me to deliver insights to management specific to the portfolio of the organization?
• How do I know my patent search vendor is implementing state of the art best practices?

We invite you to hear our experts take you through a list of these and other must-ask questions and tips to use in your evaluation of potential providers including,
• What are the important quantifiable parameters for evaluating your search provider?
• What are the important intangibles?
• How can you build flexibility into the engagement for peaks and troughs?

Key-note Speakers
Prateek Mohunta, COO at Sagacious IP

Anchored By
Abby Woods, Global Key Accounts Manager, Sagacious IP

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Organizations with active R&D departments are attracted to the opportunity for the reduced costs and the increased speed of delivery associated with outsourced and/or offshored professional intellectual property services.

And yet IP departments are oftentimes reluctant to take advantage of the opportunity for fear of a departure from the known quality of services currently provided by in-house personnel and/or an incumbent vendor.

Webinar Transcript

Abby Woods speaking: All right, hello everybody. We’ll start off in the next 30 seconds. I can see a lot of attendees here. I think people have been trickling in, again, I can see a lot of people joining in.

Welcome all of you to this new webinar. This is part of an on-going series of Sagacious IP. So, I think we’ll wait for probably around 30 or 40 seconds more before we start off this session. I think this is the time where I think we should start. The session is around the clock’s ticking around 11 o’clock in the morning today.

Good morning to all of you. Welcome everyone to this wonderful webinar series – an ongoing series by Sagacious IP. My name is Abby Woods and I’m the Global Key Account Manager Sagacious IP and I’m your host for this session. I can see people trickling in, a lot of people from different backgrounds and countries joining in as well. Sagacious IP, as you may know, is a 350 plus patent IP professional company. It is in the business of Patent Information Search for almost 14 plus years.

I would like to welcome you all to this important webinar. Its title is “Make No Mistake series, which is 30 Questions You Must Ask When Choosing a Patent Search Vendor”. Before I go ahead and introduce this topic and the esteemed speaker on our session today, I’m delighted to welcome all of you. I can see all the participants from around the world. I can see attendees from the US of course I can see Canada, parts of Europe, France, and Germany. I hope everything is okay there; UK, and of course, many from India, as well.

That’s fantastic- a great mix of audience that we invite today. So your participation basically is a wonderful encouragement for our efforts and spreading knowledge during these unfortunate times. I hope you’re all keeping safe, your families as safe as well. We’re also thankful to all our clients who are already sharing their problems with us. This is such that we get an opportunity to come up with the relevant solutions as well.

Before we go ahead and without any further ado, I’d like to go ahead and introduce our first speaker for this session. His name is Mr. Prateek Mohunta. He’s, the COO of Sagacious IP and has been in the business of patent research for 14 plus. He’s an engineer himself having graduated from prestigious IIT, Delhi in 2006, and he takes great pleasure in working closely with R&D managers. He’s worked with patent attorneys across the globe. He also works with licensing managers and investors to help them make informed and strategic decisions about their IP technology.

So, welcome to the webinar, Prateek.

Prateek Mohunta speaking: Good morning. Yes Abby, and thank you for having me here and it’s a pleasure to be on this webinar today.

Abby Woods speaking: Fantastic! That’s great. Before we start off with the presentation today, we’ll be addressed by Prateek. So, let me ask him for his initial remarks on why this particular topic is important.

Prateek Mohunta speaking: Right, Abby, as you mentioned, we’ve been, as a company Sagacious has been working for the last 12, 13 years providing patent research. I myself have been doing this for the last almost 15 years now. What I’ve seen, and what I’ve noticed, is that all organizations, actually with active R&D department are attracted to the opportunity of reduced costs and increased speed of delivery with outsourcing offshore professional services.

Now, that opportunity still exists. However, what we have also seen is that there is reluctance in the IP departments to take advantage of this opportunity. The primary reasons are related to a departure from the known quality of services that they already have access to. It is either via their in-house professionals, or via their incumbent vendor.

Now, in this webinar, what we’d aim to empower those responsible for addressing this patent searching needs for their organization. This will help make that decision in a more informed way and ultimately, have a healthy, profitable change. That’s the objective of the webinar and that’s something that we hope we’ll be able to achieve. Based on the experience that we have had, we’ll be able to share some information. These pieces of information people can take forward and use in their own processes. I look forward to that.

Abby Woods speaking: Sure, that’s wonderful, Prateek. Thank you for setting the context for this webinar as well. Before moving ahead, I invite our listeners to keep sharing their questions as and when they have it during the course of the session. I think if you can probably put in some questions that’ll be fantastic.

They can share their questions via the GoToWebinar question box on the right side of this presentation window. You can see there. I will pick up on those questions and ask them to our speaker, Mr. Prateek after they finish obviously, they’re brief talks.

Now, I have a small announcement as usual to make as well. I would ask everyone to stay till the end for this particular announcement that could benefit you all in these desperate times. Let’s get started with the main part of the presentation. For that, let me invite Prateek once again to take us through this, over to you, Prateek. Go ahead.

Prateek Mohunta speaking: Thanks, Abby. Perfect, without really spending any more time, I think let’s jump to this. So, the basic idea, as I said, even in my earlier statement, was, there are so many providers in a destination. Especially, like India, they are offering IP support services that it’s almost a daunting question, ‘How do you decide on the right partner?’ It is stated so, because at the end of it, in the IP industry, where we are- quality, integrity, timeliness, security of your data matters a lot.

Basic Corporate Information

That question, is a really big one, and a really critical one. Now, the answer is not really a straightforward one, but based on the experience that we have. We have tried to categorize the questions that any company can ask to be able to come to an informed decision. We have sort of broadly categorized them into three areas that one can focus on.

For this particular selection, those areas being: ask about the company and check for any specific red flags to your patent due diligence.  You look at the service and quality levels, try and make a judgement and try and make an evaluation on that. The third and a very important criteria being: look for references. You look for the experience that these guys and that the providers might have. Also, you try and minimize that uncertainty that goes along with it. That’s how this presentation is going to be structured, or this webinar is going to be structured.

Let’s move into the first section of this, which is about the company, and what we can actually look at. Before I move forward, the entire presentation has actually been- all of you are already doing this. A lot of people would already be doing this, already working with specific patent search vendors, and specific partners.

There are specific questions that you already asked. The idea here is to be able to create repository of such questions that you can ask and add to your questionnaire. Or, you can add to your request for proposals, and get certain ideas that you can further ask those questions that you can use. So, we have structured this into two sections.

Each slide would be structured into two sections. One would be a list of basic questions that you guys mostly ask. The other is a list of additional questions that very few companies ask while choosing a patent search vendor. I think, asking these questions would help you make a very informed decision. It will help to be able to differentiate between the really matured and credible players in the market. Moreover, help you identify the ones who are not really up to the task.

Let’s start with the question that you should definitely ask is about the basic corporate information. You must look at the basic details and the website- how is it structured? Does it look professional? Look for corporate e-mail IDs. Look for domain names and how good they are and do they cover multiple things and are they trademarked- things like that.

Also, ask about the company’s history. Ask about how the organization is structured. What are the official locations- office locations and are they located in multiple countries. If yes, do they actually have local representative at those locations? Especially, when you’re talking about local representatives, try and find that they have local representatives in the geography of your interest. So that’s the first basic question that anyone should look at when trying to select a patent search vendor.

Moving on, also try and have an understanding of the company sites. How big the company actually is and how mature it is? Do they have employees in multiple locations that can support you in specific geographies, if needed? Do they have employees in China, for example, or do they have employees based out of Europe? Do they have employees based out of US, as that could help you make a specific decision around that.

There is another important thing that you should also ask. Ask about the number of employees that a patent search vendor would have with specific experience as per your specific requirements. This is a very important question to ask, rather than just asking and being restricted to asking about how big the company is. This is because, I think, more important, specifically, for the kind of work that you’re doing. So, if you’re looking for specific patent search, work in that specific technical area. It’s important to ask for number of searchers who have the capability to handle that.

Moving on, the third question, which I think is one of the most critical questions to ask. It is about policies and the SoPs that the companies or the patent search vendor have. Mature and established companies have such things in place. This is how you can actually truly differentiate them from the smaller mom and pop shops or the companies that actually are there. It helps you understand very clearly about the HR policies, the ISMS policies, and confidentiality related policies they have. It also tells about the data confidentiality rules that they have, and if they have any disaster recovery mechanisms in place.

Now, all of these are basic questions that most companies, I’m sure, already ask while choosing a patent search vendor. However, there are more that you can ask to truly differentiate between different players and learn more about them. Let’s get into those. So, what about certifications? Again, this is something that’s very important. It is important, especially if you’re doing business with the firm in India. Having ISO certifications including ISO 9001 and 27001 is a must.

If a company doesn’t have an ISO 9000 certification, you can be very sure that the chances of that company having any internal process for handling projects and, handling quality and managing the consistency, they really don’t have that.

Similarly, if a firm does not really have a 27001 certification, chances that the company having a very solid IT infrastructure and physical infrastructure in place, specifically to safeguard your confidential data, it’s really not there. That means that the company is not really at that level. Or, it means that the company is not really serious about the confidentiality and has no control over its employees. It’s also possible that they may be actually using freelancers for its projects. Also, especially with GDPR rules now in place, it’s very important to add back to your list of requirements, as well.

That’s the first add on, or value added questions that you should ask while searching for a patent search vendor. There is another key thing that we have actually seen in the past. There is another interesting parameter, especially to distinguish good companies. It is to see if how good a standing that company has in the market. It is asking for a business credit report and asking for a business credit report from a very credible agency like Standard & Poor’s’ maybe. So, ask for that, and you will be able to actually differentiate between how good company that actually is. It’s a third party validation that you get.

Moving on, other parameters could also hinge on the kind of awards and achievements this company might have had. So, this will help you actually identify a company from a laundry list of companies out there. Are they actually participating global events? Are they having global visibility in terms of media? Is there any content that’s out there that these companies are talking about?

The content that these companies are really showing or talking-it’s actually out there where these companies talk about content anyway. The credibility of that content can be an actual indicator on how good these companies are against their counterparts. So, just understand that and try and enquire about this more.

Similarly, various insurances should be a must when you are actually partnering with someone in a service industry. A player in a service industry who actually takes ownership of the quality of their deliverables, would have things like these in place. It is specific for patent research industry, where we are talking about outsourcing. We are talking about a firm that sort of claims to do freedom to operate searches and other high risk and highly critical searches.

They should have some sort of professional indemnity insurance. They should have some sort of general liability insurance that they can use in case anything goes wrong. Further you should also pay attention to the sum insured for such insurance policies. It’s because that’s also a very good indicator of how serious a player this company is. At the end of this section, just I would suggest and recommend having an open-ended question. This is where you can ask for a one-pager or a two-pager sales pitch from this company.

It could almost be like an elevator pitch for this company to make for you. This could cover USPs that they have over their competitors. This could ask them to identify their top three competitors and provide USPs of each of those competitors, and their USPs. If a company is sort of mature and really credible, they would also very well know what their own weaknesses are. So, ask for a SWOT analysis, if you can, from this particular company.

This is because if it’s a grounded company, they would know what their weaknesses are and what their threats could be. That’s actually a good sign because they know what they need to improve upon. So, it’s another very interesting question that you can ask.

At the end of it, I think you can also talk about experience that these companies might have. How many hours they have spent on specific technical areas and how many projects they have delivered. Things like that can also be a part of this one-pager or two-pager to slide deck. You can ask that from them as an open-ended question. That sort of brings me to the end of the first section. I hope that this was actually useful for you, and you will be able to take up a few things from this for your next RFP.

Let’s move on to the next section of our presentation. Let’s shift our focus to evaluating the service and the quality levels of the various companies. Very basic way of doing this is via Test Projects, via pilots. That can actually help you differentiate companies, but let us try and funnel this down further. Are there any other questions that we can use to judge the service levels and quality levels of the company?

Service & Quality Levels

Basic Questions to Ask While Choosing a Patent Search Vendor (1/3)

SLAs (Service Level Agreement)

So, start off with the basic ones, first. Start off with the different SLAs (Service Level Agreement) that these companies might have. Start off with response time to e-mails that they have the board. What are the project turnaround times? What are the lead times that these companies have on proposals? How long do they take to get back to you with offers and quotations and proposals? That’s also very good indication for this.

Forecast Capabilities Required to Increase or Decrease Resources

In addition to that, the IP industry knows that there are always specific deadlines to adhere to. There is sometimes a rush off new inventions based on calendar year’s end. Also, there are certain deadlines that everyone has to meet. Are there any mechanisms in place for prioritizing specific request? Do they have the capacity to handle the peaks? Whether they maintain buffer of resources to handle that extra work that might come from the client’s end? Or, are there any other mechanisms in place to handle these peaks of work?

Continuing from that, that’s actually very important for a client, or for someone like you to understand. A patent search vendor can actually not manage the peaks alone without the help from the client. They will need your support, as well, to actually be able to handle it. However, it’s important to ask, especially from your end, what kind of information do they require for them to be able to forecast and any increase or decrease of resources that they might have to do. It is just a very important and critical question to ask. It is so that you are aware that the kind of information that you will have to send across to them.

Company Pricing Models

Let’s move on to the next question, again, another straightforward question that most of you would already be asking. However, just certain pointers that I wanted to highlight here. It is that are there any specific fixed pricing models that these companies might have? Are there any success-based or contingency-based fee models that these companies provide? Rather, if you are interested in an SBA relationship or a longer term engagement setups?

Try and understand what the differences are. Also, know what the advantages are that you can get from opting for such FTE setups as compared to your on-demand rates. That comparison is again very good external information to have.

Advanced Questions to Ask While Choosing a Patent Search Vendor (1/3)

Methodologies & Processes- Gantt Charts

Moving on from the basic questions, let us look at some additional questions that not too many people ask. A lot of people ask for methodologies and the processes that are used for specific projects that you want done. However, if you want to actually dig deep, delve deeper into this, ask for more detailed methodologies. Ask for companies to go that extra step. Ask for Gantt charts that sort of showcase the steps, the deliverables, and the effort. They are involved in each step of how the activities are going to be tracked – map it onto a timeline. That will actually, sort of set a trustworthy company apart from the others that are there in the mix.

Suggestions on Optimizing Service Levels

Similarly, one thing is that you’re actually looking for a partner. You are not looking for just a provider. You’re looking for a partner, and if you’re looking for a partner, you’re also expecting from them that they will help and improve your existing processes. If you have a specific requirement, that’s how you have sort of set out the RFP. When you are asking for the right partner, you should ask for help in improving those processes, as well.

Ask for suggestions on improving and optimizing anything. Can they help you reduce certain costs? Can they help you optimize the process complexity? Or, do they have suggestions around that? Or, if there are any best practices that you currently are not aware of? However, these partners, these companies were actually working with multiple clients. They would have certain best practices that can be implemented in the processes that you’re trying to implement or, having executed.

Try and ask for those suggestions that would also give you an idea as to how good and how experience the service partner or the patent search vendor, has.

Ensuring Constant Work and Search Quality

Let’s go back to that theme of managing resources that I touched upon a little while back. It’s important to understand what kind of plan that a partner might have in order to maintain the search quality. Also, in order to maintain the work delivery, even when there is ramp up in volume, and even when there is an employee chain, it’s important to have a process around that. That should actually be a part of a questionnaire for your RFP.

I will continue working, talking about service levels as we move forward. How you can, sort of evaluate questions that you can ask to judge? How in terms of service level, how these companies are placed?

Basic Questions to Ask While Choosing a Patent Search Vendor (2/3)

Sample Reports- Can they be Customized to your Requirements?

Similarly, going back to basic questions, ask for sample reports. Can they be customized to your requirements? That is very important to ask. It will give you an idea of the output quality, and what can actually be expected. It’s important that report formats that the patent search vendors have, they help you understand the content of the delivery. They are user friendly, they’re usable.

At the same time, you need to understand that there are certain things that you are used to. There are certain things that you like doing in a certain fashion. It’s important to check whether the partner is open to adapting to these formats and customizing to this format. This is so that you can actually use that information that will be presented in those reports. Ask for those.

Governance & Communication

Another simple and basic question that should be a part of all RFPs is related to governance and communication. Is the patent search vendor willing to provide you with a single point of contact for all your needs? Are there any specific communication methodologies that would be followed? Would there be specific meeting schedules? Is there an information sharing protocol that is going to be followed?

Whether it’s going to be via e-mail? Whether you wanted an encrypted e-mail communication, and via cloud? Or do you have a specific folder setup, or a cloud setup that you would like our partner to follow? Ask those questions during the RFP itself. At the same time ask for ’Are they going to be on a quarterly or monthly management discussions that you would have? Or would you be straight away in discussions with the searchers or the researchers who would be working for you’? All of this is very important to clear up at the very beginning of the engagement.

Similarly, another thing that I talked about earlier was that smaller companies often have a subcontracting arrangement. Try and get clarity on that sub-contracting process, that are they using subcontractors for getting certain goals delivered? If they are, then what kind of agreements and arrangements they have with these subcontractors? In terms of communication, let’s go back to- are there any customer service portals that are available for you. Would an engagement tracker be sent to you every fortnight or every week? Will it help you keep aware about the effort that is being spent and the work that is being done? That’s important.

There is another thing very important. Especially for European and Asian client- is there a possibility to have communication in a specific language that your team would be comfortable with? Do you have capability to communicate in Japanese or maybe in German? That’s again an important question and a very good to have feature in a patent search vendor that you are going to choose.

Advanced Questions to Ask (2/3)

In addition to that, there are a couple of additional value added questions. You can ask these for a further check on the validity and veracity of the partner claims.

Willingness to Host you in their Offices

It is to ask for their willingness to have you, in their offices, if you decide to visit India. For example, give you a live visit of their offices via videoconferencing. Or, maybe in this particular time if you would like to just ask for a video or images of the office facility. This will help you get an idea of the claims that the patent search vendor might be making. Make that a part of your RFP and not many people actually do that. This is a very good trick and very good indicator if you’re choosing the right partner, or not. That helps building on trust and making that partner more trustworthy. I come to end of this section on service levels.

Basic Questions to Ask While Choosing a Patent Search Vendor (3/3)

I’ll move on to how to evaluate the quality of the service partner that you are looking at. Very simple question that can help you get an understanding of this.

Search Tools being used

One of the key things is to have a subscription to leading search databases, and tools to provide quality and comprehensive report. If a company doesn’t have dedicated subscription to both – at least two or more leading databases, chances are that this is not really a very professional form. It would be just a bunch of people relying on database access, either provided to them by the client, or some unauthorized sources.

That basically means the database is being shared by multiple people. That sort of puts your confidential information on the risk. The timely delivery that we were talking about and which is really important is totally dependent on this. It’s very important to have an understanding of the access to tools that these companies have.

Patent Search Vendor’s Competence Levels

Another important question that we can talk around this is access they have to structure non-patent searches. This is because non-patent search is a very critical component of the entire searching process. Evaluating this will actually help you ascertain whether companies expertise live in terms of execution and delivery of a project.

A basic question could be around the expertise of the partner. Expertise of the searcher that is going to be used, or rather, that is going to be made available to you for specific engagements. It’s important to understand the profile of that searcher. There can be multiple things that you can ask around that. I’ve just listed down a few which could be related to academic and technical expertise.

It could be about IP laws and processes- What kind of expertise they have? It could be around experience on various search tools that we were just talking about. What kind of language expertise do they have? Do they have any native language expertise- Can the company provide that? What kind of certifications do they have? Do they have any searching certifications at the searcher that will be made available to you? What kind of searching experience do they have? All of these are very relevant questions to ask, and very good criteria to judge the searcher’s competence level.

Training Models for Continued Learning

Similarly, when you’re looking for a patent search vendor, you’re primarily looking for someone to have a long term engagement. If you are looking for that, it is important to understand about the training models as well. Specifically, training structures for continued learning of a searcher- what kind of classroom trainings do they provide? Are there any specific certifications that they get their searchers to go for?

Do they also engage in any external training by any US or European, or Japanese patent attorneys for specific case laws? All of this is very important to understand as well.

QA & QC Process

To end up on the basic question, a very basic question would be around QA- Quality Analysis, and, quality check processes and indicators. It could be at a company level, you could ask about client retention rates. You can ask about whether are there any tracking mechanisms to track any client satisfaction scores? Are they open to asking for feedback and stuff like that?

Are there processes around feedback and iterations? All of this can be a very good indicator. Ask for any specific KPIs and KRAs, they have to judge quality. How do they measure quality and how do they benchmark quality internally? What kind of process they have to continually evolve and improve that?

We’ve gone through the basic questions around quality. Is there anything specific that you can maybe ask to make an even better judgement? Let’s go through those questions as well. Important questions are to ask about are related to what we were just talking about long term engagement. When you’re talking about long term engagement, you have those long-term engagements with the searcher.

Advanced Questions to Ask (3/3)

It’s important specifically, in a country like India, in this specific industry, where there’s a lot of churn. A lot of people keep moving from one place to another.

Employee Retention Rate

It’s imperative that when you’re entering into long term engagement, employees and the searchers that you are working with stable. Try and understand what the employee retention rate of that company is.

That will give you an idea of the time that you invest and spend, trying to work with a specific searcher. As he learns on the job, he is able to use that knowledge. You’re able to use that knowledge and the time that is spent. You use that for making your own process efficient as you keep working with that searcher on and on.

Suggestions on Improving the Quality

Similarly, as I mentioned earlier, where we are talking about a partner, you can always ask, because these companies are working with a lot of other companies, a lot of other clients. They know about best practices that exist. Try and talk to them and understand and ask for suggestions on improving quality. What are the best practices that can be implemented to further improve the quality of the work that’s going to be delivered?

Adoption of Latest Tools

In addition to that, we talked about tools, and there are a lot of tools that you already talked about. What about the new-age tool and the latest technologies that are coming in AI based and the new technologies that are coming in? Are these patent search vendor that you are looking for- are they adopting these tools to improve efficiency and quality of project?

This is because now we are getting into the fact that there are so many tools. These were talked about in other webinars that we did. We were talking about specific tools to improve patentability searches, specific tools to improve analytics, and landscapes. Do these companies make use of such tools in their processes? Are they still using old processes that they were using maybe three years, four years back? That’s important.

There is another thing that can be actually talked about. Do these companies actually have people with AI or ML and data science expertise in the team? Will this help create new solutions, and help improve the existing processes? This is because if companies have these, then, that’s a very good advantage to have. It is stated so, especially in times those are to follow and that are to come. Try and ask for that as well. That is a very important question to ask, and some very relevant question to ask.

Direct Interaction with Searchers

Moving on to the last question on this section, try and talk to insist on rather, talking to the patent search vendor directly. At the interview when you are trying to select the searcher, try and have an interview once you have seen the profiles. Try and talk to the searches directly. Insist on having that. So the company should be willing to allow you to interact directly.

This could happen either by an in-person meeting or via direct, videoconferencing or whatever means. But they should be readily available to share those patent searches, resumes and profiles with you, composition of the team. All of that should be very readily made available to you. Insist on that.

At the same time, try and understand whether you would be working directly with the searcher. Would there be a go between project manager and a sales guy in between? Because that’s a very key thing to have, and not based on how you would like to work. What your preference of working is? You can choose to mould and insist on something like that.

However, that sort of gives you a very good indication of how good the final searcher, actually, the person that you are going to work with is. It helps you mould that person in the way that you would like to. All of this sort of helps you take care of service and quality levels of a patent search vendor that you’re working with. At the end of it, once you have asked all these questions, I think you should have a very good understanding of, whether you have chosen the right partner or not.

References and Conflicts

Moving on to the last section that I talked about earlier as well and one of the most important is references and conflicts. There are certain things that you already asked. Specifically, the company should be able to port references, specifically with contact information in relevant domains and geographical jurisdictions. Ask for factual proofs. If they are able to provide that, you can be sure that this company has a critical background. You can sort of entrust your domain specific processes and quality would be maintained by such companies.

Basic Questions to Ask While Choosing a Patent Search Vendor (1/1)

Other Similar Relationships

Sometimes, I understand that even in the nature of business that we are, with the confidentiality in place, even for good firms, it might not be able to all the time provide you with a reference. However, all good firms have that kind of relationships with their clients where they are able to share some references in your jurisdiction. Insist on that and try and that will help you get more confidence in the ability of the patent search vendor to provide you quality work. You can actually get to know of any of the shortcomings from your peers or colleagues around.

Company or Subsidiary Reference

This is in terms of other companies that might be out there. A better reference would actually be if you have worked with the same company in the past. Or, it could be if you have worked with a subsidiary in the past. That’s a very good question to ask.

Conflict Check

At the same time, when we are talking about trusted and credible companies or big companies, chances are that they are already working with a lot of players, established players. So, the chances of a conflict are high.

Stress on that and it is important to understand and have a very clear demarcation of what they’re already doing. Are there any specific companies that you would like to avoid? Are there any specific technology areas that you would like to have as a part of your conflict checklist? Be clear on that, and have that very clearly defined at the very beginning of your relationship.

Advanced Questions to Ask While Choosing a Patent Search Vendor (1/1)

That was on the basic side, and I think, you come to the end of the top 30 questions to ask.

Latest Innovations/ Strategic Contributions

There is a last question and one of the very good parameter actually to ask. To be able to judge your patent search vendor is to ask about any specific innovations or any strategic contribution that they have made for any client in the last year or so. They might have been in a very similar situation, as just like you.

This will actually help you create a very good understanding of how progressive and how innovative your patent search vendor is. Or, it will tell you if the partner just ran off the mill normal search vendor who doesn’t really focus too much on innovative processes. Or, that he does not bring in those new processes in place. That is very important to understand. That is very important to judge.

For example, that’s something that you can talk about. There are a couple of other things I think we have actually talked about in the past. One thing that I think I forgot to mention was talking about pilot projects, or after all of this, going into a pilot project. So, it’s very important to understand what kind of pilot project policies these companies have.

Are there any specific limits that these companies attribute to a pilot project maybe? Once you have done this, and once you have moved to that stage of a pilot project and a test project, it’s important to ask these questions. I think that sort of brings me to end of, my pointers around this. I think I’ll hand it over to Abby to see if we have any questions from our audiences, and maybe we can take those as well.

Abby Woods speaking:  Yes, thank you, Prateek. It’s been a comprehensive overview of all the questions, actually, one must ask for choosing a search vendor. You literally are going to be thinking, as well with all the study questions, great presentations, and great stuff that you have actually the bottomed. Anyways, you’ve gone into a lot of ground and the audience I can see has some questions right in front of me. Probably we can go ahead and take a few here as well. This is also one of my questions as well. I was intrigued while you were sharing this about retention rate and you mentioned something about the retention rate. What do you think is an acceptable retention rate, Prateek?

Prateek Mohunta speaking: As I said, there’s a lot of churn in this industry that we’re talking about. This has sort of taken up from the IP industry, IP outsourcing industry that was there. This is something that you or many people would know in an IP outsourcing industry. The basic employee retention rate is close to around 20%. However, specifically, when you’re looking for a patent search vendor who’s really good, was really established and credible, you should be targeting an acceptable employee retention rate which would be close to about 12 to 15% annually and that’s a very good employee retention rate to have, specifically when you’re looking at IP patent search partners.

Abby Woods speaking: Fantastic, it is to 15% acceptable retention rate, Prateek, thank you. I can see it on the question here- we also talked about a lot of ‘must haves’ as well. Is there something that-

Prateek Mohunta speaking: I’m sorry, just to interrupt you, I was talking about our attrition rate, and not really the retention rate for about 12-15% should be moving. If you have something like that, that’s a good percentage to have in a search vendor. Sorry, you can go ahead with the next question.

Abby Woods speaking: Thanks for the clarification here, Prateek.

Anyway, I was actually talking about must haves, as well that you must remember, is there something that should be definitely avoided do you think?

Prateek Mohunta speaking:  I’m not sure if there should be anything, definitely avoided. However, I think one thing can be a very big red flag that anyone should be aware of. If you ask for something from a patent search vendor- maybe, any details of specific policies, something that’s been promised by them, or details of any standard operating processes, or samples, or profiles, or sample reports, and the search vendor is not able to readily produce them, or turn it around within a reasonable timeframe- that’s a big red flag.

If that’s happening, that definitely needs to be avoided. That’s a very clear indication that something’s not right, and that, something’s really wrong at that stage. If you do not get it in a reasonable timeframe, that’s a problem.

Abby Woods speaking: All right, that’s great.

Also, while you were presenting, I kind of noted down something about languages. I think you mentioned something about languages being very important. If you could just elaborate a little bit on that, as well, why is that so?

Prateek Mohunta speaking: Language is what I meant was, in terms of native language searching. It’s the capability. The best patent search vendors would actually have the capability to perform native language searches of full, original text. This is very important to understand, because you need to confirm from your provider what they mean by native language searching. It’s not just looking at oscillated documents. It’s about looking at getting a native language searcher, looking at actual patents in those native languages and analyzing them.

That’s what I mean by native language searches and that’s an approach that’s very critical. It is because in lot of searches this can actually lead to missing of critical documents. Especially, when you are doing invalidity search and FTO search, this is a very important aspect to have. This is something that you need to clarify and confirm that, do they have native language capabilities?

A lot of people would claim that they have native language capabilities but they’re actually looking at translated texts. That’s something very important to have. At the same time, very good search providers would also offer hybrid approaches. This is where a part of the search can actually cover look at machine translated texts that are part of the search can actually be done by native language searchers.

Those kinds of searchers are someone that you must look at. Those are the kind of patent search vendor that you should definitely choose as moving forward.

Abby Woods speaking: Fantastic, Prateek, and thank you for that. I have got another question here from a member, a participant here. ‘What literature resources can you provide to use, and how expansive those resources should be?’

Prateek Mohunta speaking: A good search provider would actually rely on multiple search engines, multiple patent databases, and multiple non- patent literature search sources. It would create a strategy that would be specific to what the requirement is. They will keep looking for it in different languages, different areas, and different search databases. This will go on until they actually come to the result that they want.

This is something that we’re going to talk about more as well. It’s important that they look at multiple resources till the time they’re satisfied that this is the best that can be identified. We have talked about the advantages of using this particular strategy of looking at multiple databases in one of our webinars in the past. I think it was scheduled for some time in August. I think that’s something that maybe people who are interested in this can listen to and understand. They can learn that why using multiple such databases and having access to those multiple databases is important.

Abby Woods speaking: That’s fantastic and you’ve got another question here. You also talked about customization and flexibility. Why is that important, Prateek?

Prateek Mohunta speaking: My first answer actually responds to that as why would anyone like to work with someone who just uses something very specific, and is not willing to use something, that a report format, or a process that actually works for the client.

Finding a provider that can actually customize their approach and processes, and optimize it in a way that addresses your requirements, it is the provider that you need to look for. It is so, because, at the end of it, you are looking to deliver results, and processes, and workflow. This should sort of help you understand everything that needs to be understood. It helps you interpret the results that the patent search vendor provides.

It’s not about just receiving some sort of information, and then you going through it and trying to make sense of it. It’s important that you look for a provider who is ready to adapt to something that makes sense for you.

Abby Woods speaking: Right, thank you for that as well. I’ve got another question here as well: I think we’ve got probably some more time. We’re actually going to go with the time, and I’ve got 1 or 2 more questions here that I would like to take. A participant says some IP firms provide class services. Do you think size of the firm should be a key determinant, in your view?

Prateek Mohunta speaking: It’s sort of a question that you need to answer in a specific way. Based on your requirements, you have got a very specific requirement that you are looking at, for example, where you are looking at 2 or 3 searches a month, or 1 or 2 searches a month in a very specific technical area. You are very happy with the boutique firm that’s doing it where you are very comfortable with the patent search vendor that’s doing it for you. So, I think you should stick to that.

Specifically, you might get variety of technology area to cater to, or different kinds of searches that you need to cater to. Then it is important that the size of the firm plays an important role. Primarily, because they’re going to be peaks, they’re going to be pressure of work that would come in at certain times. Boutique firms would not be properly capable of handling that.

However, scalability, at the same time- sometimes it’s important. It’s actually very important sometimes that you’re able to do that scaling, which is not possible in a company. Sometimes, this scalability part becomes a very restrictive factor. It becomes more important than just having a domain expertise. It is a question about how very specific and how variant the requirements are.

Abby Woods speaking: All right, Prateek, thank you for that.

I’ve got a larger question. I think we will take probably, apart from this, one more question as well. Somebody says, ‘what is your mail the USA compared to a whole host of vendors in India’? Also, I think he says, ‘do you employ an ML within your search capabilities as well’? ‘How, are you handling speed and efficiencies, which is very high on clients’ needs’?

Prateek Mohunta speaking: I think this is a 2 or 3 questions you asked simultaneously. I think this is more directed to, I think asking about Sagacious, specifically.

Sagacious- As a Firm

In terms of what Sagacious’ USP is, I think they’ve been talking about a lot of things in terms of experience that we have. We have actually created the experience and the best practices over the last 12 years. That is the reason why we have access to those global best practices. It’s the kind of people that we have at our end and the expertise that we bring with them. Also, it’s the training model that we have which helps us achieve that.

We have got this 7E model, which I can share a bit with that person after the webinar. If the person is actually interested in understanding more about it hey can maybe take a look at what Sagacious brings. He may visualise what it brings in terms of differentiation from others.

Let’s come to the second part of that question. In terms of ML and AI, we’re one of the very few firms that were actually employing it as a part our searching processes. We actually have an entirely different section and series of webinars going around IT for IP. This is something that we have launched very recently over the last year. It is where we have invested and we have spent a lot of time developing IP tools around improving efficiency of IP processes.

We are actually doing a whole set of webinars around that, and we are taking it very seriously. You will be surprised to know a lot of our work that we do takes help from a specific AI based tool, specifically on patentability searches.

In addition to that, we have also innovated and come up with a webinar that happened a few weeks ago. There we talked about hybrid search model, where we are searching using both approaches. The search process integrates with an AI-based patentability search and an actual manual search. There are a lot of innovations that we are doing, and that we have integrated in terms of the search processes. We are talking a lot about it, and we are wholly committed to bringing AI and ML into the IP services industry.

Abby Woods speaking: Well, thank you for the answer, Prateek.

Prateek Mohunta speaking: People can actually look at those webinars and listen to those webinars. They would have been hosted on our websites as well related specifically to AI-based searches, IT for IP and even Hybrid Patentability Searches that we talked about. We’re trying to bring in a lot of cost savings; a lot of advantages- in terms of efficiency improvements through these aspects and through these processes that we have.

That One Quality A Patent Search Vendor Must Possess

Abby Woods speaking: Fantastic, Prateek, thank you for that as well. Before I end this completely, this was something that I was curious to know as well. I’d like to quickly ask, what is that one thing that you will say a search partner must have, Prateek?

Prateek Mohunta speaking: If you asked me on the partner, a provider should be an extension of your team. The most important part as far as I’m concerned, and this is based on a lot of discussions that we had with the client, is to have that understanding of that invention. It is to be able to understand and conduct searches and act in a unique way. This is very similar to how a patent examiner does during patent prosecution. The patent search vendor should act as an examiner, and should have that experience. It’s not just about conducting patent searches, just for the sake of doing that. That’s the most important and the critical part in a search partner.

Choose a partner whom you can trust in terms of capabilities and the qualities. They should be transparent about these capabilities that they have. They should be transparent about these searching capabilities that they have. Choose them, and work with them, so that you have full confidence in terms of who you are working with. That will allow your team to focus on something other than the actual search. It will help you focus on other quality/ value added things and other critical activities.

That’s who I think a search partner should be. That’s, I think, the most important parameter or the most important thing that a patent search vendor must have.

Abby Woods speaking: Thank you once again, Prateek and thank you for this comprehensive question and answer session here. Thank you for taking out time and sharing all your expertise and your experience over the years with the audience here. I’ve got plenty of questions still, but I would say that we’re on time. We’re just going to go ahead and try to close this. This has been a wonderful session guys.

I’m sure our listeners have great takeaways from this session as well. They’ll be able to use several of these pointers to take back to their management for better budgeting provisions. We’ve not been able to cover all the questions, our apologies. I can see many questions being popped up here as well.

However, I would advise all the participants whose questions are unanswered, please go ahead and write us back. Those which could not be covered will be answered at the right after we publish it post this webinar. Thank you to Prateek. Thank you for taking our time as well.

As promised, there’s an announcement, which I should make at this point in time, as well. As already mentioned, Sagacious Team is offering complimentary offer on patentability searches of a 20% discount on your search. I repeat, it’s a complimentary offer on patentability searches of 20% Discount on all search. Any information, any queries regarding that, all of you can drop us an e-mail at webinar@sagaciousresearch.com to avail this particular promotion.

I want to extend a big thank you to our listeners from helped us start on time. We highly appreciate that, and thank you all very much. We’ve planned a webinar as well, so please stay tuned. The webinar titled as ‘Make No Mistake: How the US Firms Ensures Compliance with Export Control Regulations When Offshoring Patentability Searches’. You have a great day ahead. Take care of yourselves.

Stay safe to take care of your family and hopefully we’ll see you in the next webinar as well. So have a great day. Thank you for taking out time. This is Abby Woods, signing off, Sagacious research. Take care of yourself.

Prateek Mohunta speaking: Thanks, Abby. Thanks, everyone.

Abby Woods speaking: Thank you, Prateek.

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