Advantages and disadvantages of patent search outsourcing (XNUMX)

2019.08.09 | search column

This article is based on what we researched at the time of writing.Please note that some information may differ from the latest information.

 As a point when considering outsourcing patent search, we will send the advantages and disadvantages in two parts.In the second half, we will look at the disadvantages, following the advantages of the first half.

[Article in the first half] → Advantages and Disadvantages of Patent Search Outsourcing (XNUMX)
Table of contents (first half)
1.First of all
2. General advantages and disadvantages of outsourcing
 [General benefits]
 [General disadvantages]
3. Benefits of patent search
  A) Adjustment of personnel (adjustment of increase / decrease), handling of busy business, variable cost of fixed cost
 B) Organize operations and clarify core operations
 C) Reducing the burden on employees (focusing on core business)
 D) Utilization of external specialized know-how
 E) Utilization of external equipment
 F) Cost reduction

4. Disadvantages of patent search

G) Efforts to standardize operations

 Requirements are required when specifying search and reporting methods, such as conforming to internal business rules.In addition, it is necessary to organize and verbalize at least the contents of the request on a case-by-case basis.These efforts have a two-sided relationship with merits (organization of work), but the problem is how much this effort can be tolerated and how much can be reduced.There are four main ways to reduce the effort.

a.Reuse existing internal resources

 If the search method is specified, there are in-house manuals and similar texts, and if the search contents are explained, there are invention sheets and materials generated in the course of business.With that existing information, you don't have to start from scratch.

b.Reuse existing external resources

 If the same person does the same thing, the additional effort will be minimal.Therefore, even when using the same research company, the same person in charge is appointed, and the research company is actually used according to the content of the request.

c.Share the effort

 It is common to request a search for a related theme together, but if you think about it further, if the same time and effort is required other than the patent search, you can request "search" and "non-search" together. It can be said that the effort of "search" alone will be reduced.For example, in the case of rights acquisition, it is possible to request a search and application as a set, and in some cases, request from the stage of invention support before the search.This may be difficult for large companies, but it may be easier for startups and small businesses to consider.

d.Select searchs that require less effort

 Depending on the situation, it is possible to take measures not to outsource the time-consuming search at the time of outsourcing.If there are multiple search projects, it is possible to preferentially outsource the simple projects first.For example, an invalid material search can be conducted if the target publication number and claim (or component) are known, so it can be said that the search is relatively easy to outsource.

H) Difficult to accumulate know-how

 Of course, it is difficult to accumulate know-how without experience in research practice, but the actual ratio of outsourcing seems to be only XNUMX to XNUMX%.Since this is an average value, some organizations may have a higher ratio, but the disadvantages of "difficulty in accumulating patent search know-how" are unlikely to occur.
 If there is more than that, know-how will be unevenly distributed.For example, if the IP department is responsible for all patent searches, the search know-how will not be accumulated on the engineer side.For this reason, some organizations require R & D engineers to carry out patent searches themselves.By doing so, not only the knowledge of the engineer himself will be refined, but also that the engineer and the person in charge of intellectual property (including the outsourced search) will have a "common language" of patents and patent searches. It can be expected that communication will be improved, search quality will be improved, and as a result, it will contribute to the strengthening of intellectual property.

I) Weakened governance

 When your company's business goes out, you can't see what you've been keeping an eye on.The research work itself becomes transparent by proceeding on a contract basis, and in that respect governance has the effect of being strengthened.However, in patent searches, the information handled is often highly confidential, and although a confidentiality agreement is concluded, measures against information leakage will depend to some extent on the contractor.
 Therefore, when outsourcing, we may set rules regarding information security, but it is important to note that there are limits and cost obstacles due to being an external organization.For example, if there is a risk of violating the confidentiality of other business partners during on-site inspections, it may not be acceptable.
 In order to overcome this disadvantage, it is important to set rules to the extent possible, create a system in which information is shared in both directions when a problem occurs, and finally, whether it is a reliable contractor.

5. Finally

 So far, I have summarized the "merits and demerits of outsourcing in patent search", but how was it?We hope that it will be helpful for those who are considering outsourcing for the first time or reviewing existing outsourcing companies.
 In the last section on weakening governance, I wrote "Are you a trustworthy contractor?"In this regard, please visit the investigative company to which you are entrusted.If possible, take a look at the searcher's working environment.Are you organized?Are you dealing with materials that make you feel uneasy?Are there activities for information security on a daily basis? Just like Murphy's Law, "If it can happen, it will happen someday."On the contrary, research companies will need to be sensitive to these signs and crush them on a daily basis to prevent them from happening and build trust.Finally, I would like to end with my own commandments.

Sales Department Ogura

<Reference>
Industrial Property Information and Training Center "Patent Search Workers' Current Status and Future Research Report" (March 24, 3)
https://www.inpit.go.jp/jinzai/topic/topic100011.html

Adecco Co., Ltd. Vistas Adecco "VOL.27 Special Feature: Outsourcing Present and Future"
https://www.adeccogroup.jp/power-of-work/vistas/adeccos_eye/27/

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