In the second webinar of a three-part series on IP risk analysis, on 17 June 2025, Emer Bollinghaus, Barbara Durling, and Alex Worley explored the use of strategic patent searching to streamline your approach to IP risk management.
Key Takeaways
The discussion highlighted four key takeaways.
Firstly, the key to successful patent searching is having a clear goal from the start. Whatever your business or product, taking a moment to consider what you want to achieve with your search will pay dividends later.
Secondly, structure your search methodically so that you can focus on the most impactful risks and understand why you have found what you find (and what you might have missed).
Thirdly, treat a search like a living document and update it as your needs change, and your focus shifts and narrows. Products, risk landscapes and risk appetites change and search updates are an essential part of risk management.
Finally, AI is a powerful tool that can be used to expand and augment a search string, explore classifications, and assist a novice searcher. But, (as always) it cannot replace human judgment and rarely allows you to understand why you have received the results that you have.
Outcome-Focussed Searching
The most common reasons to embark upon a patent search is to look for documents that pose an infringement risk or are relevant to the validity of a patent or patent application of interest. Whether you’re looking for infringement risks or novelty destroying documents, before starting a search, take a moment to think about what you want to achieve. If you’re searching to management infringement risk for a product in development, is your main purpose to identify roadblocks and develop around them? Or are you looking to clear the way for a product that is now fixed?
Outside of the development pipeline, are you considering assertion of your own IP against a third party and looking to assess your counter-assertion exposure? Or are you considering entry into a new market with an unfamiliar risk landscape and want to see the lay of the land?
Whatever your objective, your search should be built around it so that it returns only the results that are most relevant to you and your activities, and at a time that suits you. should be taken into account when building a search because distinct search parameters and impacts the timing and scope of your search.
In addition to your objectives, your search strategy should also reflect your risk appetite (how much risk your business can tolerate) and the risk landscape in which you operate (how likely it is that you might run into trouble).
Technical Specifications Meet Business Considerations
A step-by-step process may be used to build a robust search.
The first (and most complex) step in most searches is to settle the technical definition of your search – the ‘what’. This step is driven by the product and the level of detail is key. Too much detail, and your search results risk excluding important, broad, foundational patent rights. Too little detail, and the results will include so much noise that you won’t be able to find what matters to your business.
Once you’ve settled on the level of detail you need, you can begin to build a search string that captures the rights that are relevant to your product. The most broadly applicable and powerful tools for doing this are patent classification codes and keywords.
Classification codes, including the Cooperative Patent Classification (CPC), are assigned to patents and patent applications early in the search and examination process (before publication) and so all inspectable rights will have one or more codes assigned. The codes are accessible, language-agnostic, browsable (with plain English descriptions associated with each code), and relatively well harmonised. For these reasons, classifications codes offer a very powerful tool to novice searchers.
Classification codes alone however, are not the whole story. Claims are drafted with words, not codes, and so it is essential to augment a classification based search with keywords, both to help you zoom in on most relevant results within a classification and to capture results that might otherwise have escaped a fully classification-based search.
The second step in the search build process is to identify the ‘where’. Consider your key markets and focus on results that pose a risk in your current or target markets. Remember that PCT applications may yet be nationalised, and that younger applications may yet pop up somewhere of importance to you.
Next, you should determine the ‘who’ and decide whether to search across all third parties, or just search your key competitors and any active trolls in your field. Whenever you limit your searching to particular parties, remember that rights can change hands, and that the real world risk associated with a patent depends to a large degree on the party that holds it and your relationship with them. Limiting your search by ‘who’, is a big decision that should be aligned carefully with your risk appetite.
Another option for those with a relatively high-risk appetite, is to limit your search by status; in other words, look only for granted patents. This is particularly powerful for those engaged in a rolling risk analysis. This approach is most appropriate if your main objective is risk mitigation for a fixed product. As an example, rolling risk analysis of newly granted European patents can identify candidates for opposition.
The final step of any search is to assess the results and to reflect on whether they meet your needs and expectations in terms of scope, coverage and volume. If you are instructing third party searchers, did they find all the documents you expected them to find? In the results, can you find the most relevant risks or are there simply too many to consider? Iteratively refine your search until you meet your objectives, and satisfy your risk appetite.
Results Management: Discipline Determines Success
Whilst it is tempting to try and capture every theoretical risk by searching broadly and deeply, be realistic about your review capacity (and budget). Broad searches typically need a shallow review, and narrow searches enable deep analysis. If the number of search results will be so large that you can’t possibly review them all, you might be increasing your risk rather than decreasing it by creating a duty of disclosure that you don’t fully understand. An unreviewed document that is on your database is potentially a greater risk to your business than the same document would be had you never found it.
Practical Implementation: AI Integration without Black Box Dependency
Is AI the answer to all your searching needs? In short – for now at least, no.
The key is to know what AI is good for and what it isn’t. It can be very useful for scoping landscapes, summarising long documents, or helping you explore technical fields. But it can also miss the subtlety of claims language and other details such as legal status of third-party patents. The smart approach to AI-assisted searching is therefore to integrate it with traditional tools but keep overall control of the search query with a human.
We at Kilburn & Strode have been creating our own searching techniques for hybrid-AI searching using LLMs. If used correctly, these can be powerful in focussing search results - avoiding the last document of a patent search being the one you wish you’d read first.
Search Execution Options: Strategic Resource Allocation
Choosing who does your search can be key to its outcomes.
At Kilburn & Strode, as well as using our own search tools, we often work with third-party search firms who provide deep-dive capabilities for specialized or particularly crowded fields. But the key to success in instructing a searcher is the same as the key to success for building your own search: knowing what you’re looking for and why. Professional searchers are experts in their craft and they will build a search query that meets your needs if you’re able to articulate clearly what it is you want to achieve.
Instructing a search with professional service provider is not your only option.
Patent Office searches are usually carried out by highly technically skilled examiners and, for the quality of the research, they are very cost effective. However, patent examiners are tasked with finding documents relevant to the validity of other patent applications. They are not experts in nor tasked with finding documents that pose an infringement risk to a product. Although a valid approach for validity searching, and a sensible starting point for building your own search, a patent office search report is not a robust risk management tool.
With a bit of knowledge, self-searching is a good option for landscape browsing and idea shaping. But be careful what you do with your results. If you are going to store them, keep a record of when you retrieved them, and what search query returned them.
What Next
However you approach your patent searching, the results need to be reviewed and translated into decisions and actions. The ultimate goal is to identify whether you do face any patent infringement risks and, if you do, to decide whether and how to address those risks. Join us for our third and final session in this series, “Risk Resolution: Tactical Responses to Patent Obstacles”, which will take place on 1 July 2025, where we share our advice on how to meet that goal.