A validity search is a bit like an Escape room, where the information specialist “travels back in time”. The information specialist starts in Room 1, “the debriefing room”, to get a rundown of the preconditions and time frame for the search, and then continues to Room 2, “the patent search room”. The similarity to an Escape room is not only the time travel but also the creative process of finding trails that can lead to another trail, and then defining the next step in the process based on what trails are found.
In part 1 “the debriefing room” we discussed that a validity search order specification should include as much information as possible, such as the reason for the search, which claims or features should be examined, what information you have regarding office actions or communications, etc.
In part 2 “the patent search room” we discussed the toolbox available for searching compared to what was available during the examination of the patent application which led to grant.
After an exhaustive search and review of patents we enter room 3, “the non- patent literature (NPL) room”. This is a chaotic and overwhelming room with no apparent order or structure, without any guidance of where to start or even where the exit is.
Searching for clues in chaotic Escape rooms is similar to searching for NPL, where the data is scattered in a lot of different locations that are in many cases also unstructured. When we talk about patent searches it is described as searching for the needle in a haystack. When searching NPL we are still searching for the needle, but we don’t even know which haystack to search in.
Some examples of the number of academic articles published per year provide an understanding of the magnitude of this and why we need to identify the right haystack. In 2022 5,14 million articles were published and 64 million have been published since 1996. On top of that, all these publications are not searchable in one place as patent literature is. Besides these academic articles we also have NPL in form of homepages, books, standardization groups, brochures etc.
To not get lost in this chaos, it is essential to identify which of the many haystacks that stand a chance of containing the needle or that contain trails that will help in identifying additional haystacks. This is best achieved by combining knowledge from all possible stakeholders, from R&D engineers to salespeople to patent attorneys to information specialists.
What we need to know, in particular for the time period of interest:
– Databases that cover a specific technical field
– Magazines or journals that the R&D engineers know of and especially magazines that might be out of print
– Standards organizations
– Fairs and exhibits
– Blogs, forums and Youtube
– Products and white papers
– Brochures, commercial material
– Universities, researchers or inventors that were active in the field
When finally a trail is found that may lead to the exit, then the final key to that exit is verification of the publication date. The dating of the document is not always clear and has to be verified which might prove to be a challenge. A document without verified dating is of no use to the client, meaning that we don’t have a key and are still stuck in this chaotic room.
Patent examiners at patent offices are working alone in the escape room and doing their best. We are in the room with a group of R&D engineers, patent attorneys and sales people supporting us. The combined knowledge from the whole group put into use by an information specialist provides a clear advantage in the search for the needle, which the patent offices could not find. At last, we may find a way out of this chaotic room and enter the next!