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THE PATENT LAWYER THE PATENT

To overcome these limitations, many commercial tools commercial many these limitations, overcome To Patent search experts consider many factors when factors many experts consider search Patent tools can result in inefficiencies and key publications in inefficiencies and key can result tools being missed. patent that augmentexist the basic publically available and efficient. effective more searching make information to and simply aggregating range from These enhancements curated to structure for the data, a consistent creating Choose the right sources to when it comes options many have searchers Patent The most begin to a prior art sources search. content available resources open access often are easily accessible Google, engines like search including on the internet, offices, patent maintained by interfaces search and patent can be a These sources and EPO. as the USPTO such helpful start get an indication of to in the patent what exists but with search limited investigating, landscape you’re relying solely on these functionality and country coverage, costly invalidation of the conflicting patent, as a best as a of patent, invalidation the conflicting costly by costs risk mitigate and control to it is better practice ensuring prior all relevant the final art before is surfaced IP strategy is set. and strategy the scope determining for a prior art search. or own IP searching your do to choose you Whether here an expert it to third-party firm, search outsource prior ensuring to a complete fundamental keys three are lose sleep. clients won’t art so your search

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Matthew McBride, CAS, investigates prior art CAS, investigates Matthew McBride, searching, three key points to ensure success specifically considering is achieved. Patent infringement, rejection of rejection application, infringement, a patent Patent tools exist that augment the basic publically available patent information to make searching more effective and efficient. or invalidation of an existing patent are all negative of are patent or invalidation an existing prior art incomplete from that can result outcomes be resolved Though can often these conflicts searches. or even designing around, licensing, negotiation, through I a client calls in a panic because they just received your who company an obscure from and desist letter cease in its patent violates an existing claims the new product the calm the client and resolve to work you As portfolio. possibly have we could “how find yourself asking you issue, happen it doesn’t sure I make do and how missed that, again?”

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1 t ayou L : 2 Résumé of Manager IP the Science McBride, Matthew on behalf to Prior scientific research of conducts IP clients. Matt Science he sp in 2010, IP team joining the Science training CAS STN® and SciFinder® technical to Specialist providing ofpathology in plant degree holds a Master Science Matt from customers. of of and a Bachelor Minnesota in molecular degree Science the University is also a member of He the Patent University. biology Purdue from (PIUG). Group Users Information Matthew McBride Matthew CTC Legal Media CTC Legal e v l c ti r A

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PRIOR ART SEARCHING

indexing of the content by experts in the field. Expert indexing catalogs, and encyclopedias may contain historical references not of content provides greater opportunities for precision and available in modern on-line sources, for example information on comprehensiveness of prior art searches by incorporating additional traditional medicine practices of indigenous people or products relevant terminology, translations, enhanced descriptions of content marketed decades ago. One might even consider non-traditional and novelty, and proprietary search tools. sources like YouTube, where university students regularly post videos In particular, search platforms that provide access to patents along of their research projects and experiments, or the Wayback Machine, with critical non-patent sources, like journal articles, newsletters, and which captures cached versions of websites from, well, way back for dissertations, in a single interface can be valuable. Since any type of archival purposes. These sources have been cited by patent examiners disclosure can constitute prior art, your search should not stop with from multiple offices in the patent prosecution record. Personal patents. However, tracking down and efficiently searching the diverse interviews may also sometimes be necessary to find undocumented body of global literature presents considerable hurdles. This is historical practices. Though more time consuming, in cases where why expert searchers rely on platforms like STN, a search platform an exhaustive search is critical, like when seeking to invalidate an jointly offered by CAS, a division of the American Chemical Society, existing patent, exploring unconventional sources such as these could and FIZ Karlsruhe, which brings together well over 100 databases. reveal prior art missed by others, giving your client an advantage. These databases include full-text patents, curated patent and non- patent literature sources, such as Derwent World Patents Index®, CAS databases, Embase®, BIOSIS®, SciSearch®, MEDLINE®, Compendex, INSPEC® and more. Niche databases covering newsletters, dissertations, and business news articles are also included. When a comprehensive search of prior art is needed, a source like this can support an efficient review of a broad swath of the literature on a topic.

Percentage of patent searchers who find it important to be able to search both patents and non-patent literature on the same platform simultaneously.

Carefully define your scope Other key considerations to be mindful of when undertaking a prior art search are the currency and coverage of the sources you choose. Each source only covers publications from certain years, countries, Depending on the strategic importance of the search to the client, titles, etc. Often this exact coverage information is buried in the user it can often be valuable to explore non-traditional sources as well, documentation, but finding it (and understanding it!) is critical to ensuring especially in cases when the stakes are high and traditional searches that your search matches the client’s needs. Based on the legal purpose have exposed limited value. Older books, monographs, product for the search, you may only need references before or after a certain date, or anything may be fair game. Many search platforms make it easy to limit your search by a specific date, but be sure you understand what data field the system is using to define that date. Publication dates, content update dates, grant dates, application dates, etc. all have different legal relevance. In the global age of business, country coverage is also crucial. In what markets does your client foresee selling this product Arguably, the most now and in the future? Keep in mind, if a preliminary search is done important part of your search with a limited scope, but the product strategy changes, to expand into new countries, for instance, it is important to revisit the search to “is deciding when you should stop. make sure the conclusions hold for the new broader strategy scope. How up to date your sources are is also important. Preferably, new However, this can be a information will be added to your selected content sources on a daily challenging decision. basis rather than on a weekly, monthly, or even worse, irregular, schedule. This provides confidence that your search results are as current as possible, which is crucial in an age when roughly 15,000 16 THE PATENT LAWYER ” CTC Legal Media PRIOR ART SEARCHING 17 , employs chemists and chemists employs , ® THE PATENT LAWYER THE PATENT ces are found. When the goal is When found. are ces Convergence is one goal that many search expert address use to search is one goal that many Convergence be it can often critical, If is unfamiliar or the outcome the topic competitors in a field have described similar inventions, as well as to as well described similar inventions, in a field have competitors This information can them. indexed curated databases have see how strategy. search broader then advise your what point can you say you have checked enough sources from enough from enough sources checked have you say what point can you forward? move to perspectives is when you is complete search your indicator A good this challenge. sets of - including different ways tried in numerous the search have name, a chemical review, a competitor citation searching, keywords, - and the hits (or lack thereof) structure searching and chemical text, If not do the results results. the same relevant returning get keep you up as you pop to continue answers relevant and additional converge, should review to the new results then you try approaches, different your and enhance other methods, not found by they were see why or until it is achieved, until convergence original approaches search retrieved is sufficient to of that the body is determined references a legal opinion. provide Conclusion the balance seek to you As is no perfect priorThere art search. with of the strategic time and resources investment importance of however, some risk remain; will client, always your to the outcome using the best are ensuring you budget, ofregardless searching your on the and focusing scope, setting an appropriate sources, available avoiding toward a good way question will ask the to get you best ways surprises missed prior art. from For with experts. both technology consult and IP search to valuable Service the CAS Search IP, Science example, Know when to stop the most important part is deciding when of search your Arguably, this can be a challenging decision, However, should stop. you referen especially when no relevant the absence or verify exists, be sure can’t something you uncover to At stop? when to know you do of how something that might exist, biologists with many years of patent search experience. They have of experience. biologists years search with patent many scientist as Ph.D. as well tools and content best available the to access strategy is as the search ensure employed to consultants relying on critical, are outcomes When as possible. comprehensive risk mitigate and to solution the most effective experts is often search client value. maximize 17 age age P

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1 t ayou L : 2 Keywords are just the beginning. Many search platforms enable search Many just the beginning. are Keywords citation include consider to approaches search Other alternative Most curated databases offer thesauri that make it easy to answer it easy to curated databases offer thesauri that make Most as tangentially related information. information. as tangentially related when an applicant acts as a lexicographer and comes example, For their obscure sometimes, describeup with to and, terms unusual terminology the intellectually is applied to controlled invention, retrieval comprehensive. easier and more make to curated records terminology found in a specific database thesaurus can Additional Ali as well. other sources many searching for then be leveraged ofoffice Frommer York in the New Advisor a Scientific Berkin, as those found such “Database thesauri, notes LLP, & Haug Lawrence with me tremendously helped claim construction in have in STN, in different identifying the same inventor patterns of used by words publications.” legal assignee, patent source, corporate author, date, by searching facilitate to tools Some platforms search offer specialized etc. agent, a area, chemical the In in a specific technology area. searching find to the most efficient way is often structure search chemical a class for a specific compound, can search You publications. relevant inorganic substances, structures Markush in patents, of substances, the engineering In field, chemistry. for process reactions or chemical of or journal a search text the full patent refine beneficial to it is often time, pH ranges, abstracts percentages, numeric information by like or resistance. or electrical conductance temperature, pressure, for numeric allow those found on STN, like Specialty databases, is the number of where and willsearching find results the text even the ones or the units differ from within a range in the text, cited noting finds a reference 100 millimeters for a search e.g. search, you time Though it is necessary invest to (100mm = 3.94 in). 2-5 inches they offer a much these specialty databases, in accessing and resources in the post- savings providing search, and effective precise more prior art tools review less sophisticated phase and uncovering search miss. may can be done searching Citation analysis. and competitor searching with what the leverage the idea being to or many, on a few references, in references the most relevant are has indicated process examination key insight on how analysis gives Competitor a technology area. scheme for this technology changed over time for this technology over scheme changed ofin the offices interest? experts subject matter by These thesauri compiled are these questions. term historical contain highlight in the field and often to terms key as well terms, and narrower broader hierarchical synonyms, usage, describe Foreign the technology of interest. mightlanguage terms if also be relevant your depending on Also, has a global scope. search be it may covers, the timeframe the search this technology how important consider to might terms and what historical has changed classification the patent Has be relevant. Once you have chosen the best available chosen have you Once search formulate your it is time to sources, be may keywords simple searches, For query. search, a keyword With start. to a good place found have you sure it is important make to experts that all terms in the field mightuse to Ask the right questions right questions Ask the CTC Legal Media CTC Legal new publications impacting prior impacting new publications from art, journals, scholarly applications, patent published are dissertations and other sources, the world. daily around e v l c ti r A

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