The prior art search challenge – 2
When going through the process of finding a high quality prior art search provider, you typically start by looking for a provider with experienced searchers that possess technical and academic credentials in the technologies that you are prosecuting or litigating. You look for technical expertise, access to an array of databases, good quality control processes, etc. (Please refer to our previous article on how to select the right prior art search professional here.)
What other attributes make a great search provider?
An important factor that is often overlooked and one which can be argued to be the single most important ingredient, is a search team with a deep understanding of the patents and technical publications; not from a legal standpoint, but from a standpoint of how topics and concepts are typically described in a patent or technical document. Specifically, how documents typically describe an invention, where the relevant concepts are likely to be located within and distributed throughout a document.
When selecting a search team to support your prosecution and litigation research, you need to look not only for a search team with expertise in various search tools and methods, but more importantly you need to look for prior art document experts.
Why is document expertise so critical?
Most searchers use commercial search tools that provide the searcher with a means for constructing sophisticated Boolean search queries including proximity operators. These skills, if used in combination with the knowledge about document construction, can serve as a powerful means of retrieving highly relevant prior art quickly. A searcher with this level of expertise can construct pinpoint queries capable of matching phrases within documents that discuss the salient point of an invention. However, in the hands of a novice search team these tools behave like any keyword search engine; returning sporadic and questionable results based primarily on word count matches; whereas an expert will encapsulate the inventive concepts form disclosure in their strategy due to their understanding of how these concepts are laid out in the underlying documents being searched. While semantic search tools can help with this, even the best semantic algorithms available don’t offer the accuracy required to detect the nuances important to patentability, invalidity, and freedom to operate searches.
In the next blog we will look at an example of how an expert searcher would construct a query, paying attention to their assumptions of how the inventive concepts are likely to be grouped within the documents they are searching, how these assumptions vary based on the literature type, as well as a command of synonyms for the technology domain in question.
Prior art search skills can be effectively assessed by testing a candidate firm through search trials, a review of their search strategies, as well as the prior art results their strategies produce. Additionally, a phone interview or conference call where the searcher walks you through the construction of their strategy can be helpful in assessing their competency. There is no single correct method of searching prior art, so the goal is to assess whether the methods are logically sound and that the searchers not only have command of the search tools but also a thorough working knowledge around the architecture of the documents they are searching.