Recently one of my client asked me a very good question “if you do infringement analysis, you should bare all the expenses and loses that may occur in case there is any litigation/infringement in future”. The question was correct and the expectation as well. But, the law firms or analytical firms disclaims such liability. Instead, these firms take limited liability.
Why? The answer is, that it is exceedingly difficult to be more than reasonably certain that the most pertinent patent art has been located due to the complexities of the patent system. The wording used in the patent draft and the words used by the researcher may vary. The research generally tries to cover all the synonyms for example Shaft can be beam or pole or bar or cylinder or stem or handle etc.
Still there is always a possibility that in some patent documents the drafter may have used different words to misguide the researcher. Specifically, words like elongated member or even member or element can be used in the patent document to represent the shaft.
Does researcher does not understand this. Yes, he has this understanding. Then what is a problem to use such terminologies? Correct usage of words like “member or element” will also cite irrelevant patents from other domain, which are no near to the technology that is searched.
Still what is the problen in using such terminologies? Generally, for searches cost is preceded depending upon the budget available with the company. Based on the cost, working hours are defined. The research has a limited time to complete these searches that means, the researcher has to understand the technology, define a search strategy, review the results and finally prepare the report.
All this has to be done in this limited time to have win-win situation. Keeping these timelines in mind, the number of patents that can be reviewed is decide arnd few keywords are eliminated, which are giving more vague results. Further, there is also some limitation on database. The researching company can afford to use some limited search engines based on the cost that they are billing.
Even if the researching company decides to purchase all the databases and translate the same cost to the inventor or the company, its not possible most of the time. Very few companies allow such expenditure. One more limitation is that many patents are filed in other language than in “English” . English translation provided for these patents are done by automated system, which may lead to an error.
Further, getting these patent translated manually further adds substantially to cost of the search, which is not recommended. Lastly, as we all know, generally patents are published after 18 months across the globe, which means the researcher does not have access to these patents as well. Keeping all these circumstances in mind, all searches are done with substantial effort to ensure the accuracy and reliability of this search within the limited time period. Therefore, all firms take some limited liabilities.
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