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Patenting activity is increasing at a staggering rate, and so is the patent information. A patent searcher’s role is to quickly and effectively find the matching prior art (both patent and non-patent literature) relevant to the invention under study. It is like finding a needle in a haystack. Let us look at some common mistakes in patent search a searcher may make when conducting prior art searches.
1. Not understanding the need for the search or Searching without considering the purpose
A searcher performs a patent search for various reasons. To determine the patentability of your invention, to ascertain the validity of a patent or invalidate a competitor’s patent. It might be for an FTO search, an infringement search, or a landscape search. Sometimes, the inventor or applicant is unsure why he needs to conduct a patent search. If there is any ambiguity, sort it out before you begin the search. Agree on what you search.
2. Not understanding the scope of the search or Mistakes in what to search for in different types of searches
You need to be aware of what a particular type of patent search entails. If a patent searcher is performing a patentability search, he/she cannot restrict the search to only patents or patents in few jurisdictions or only for the last 20 years. The reason being, any disclosure of the inventive concept in any publicly available work worldwide is critical for that assessment. In a clearance search, you do not need to search for non-patent literature, as the focus is on In-force and active patent applications. There is also a date and jurisdiction restriction for this type of search. Also, keep in mind whether to restrict a search by families or not. For example, every relevant patent family member should be searched and assessed in an FTO search. Whereas for a Landscape search, you can restrict to one member per family.
3. Not conducting proper background read-up of the invention
You may miss out on insights about the scope, function, applications of the invention under study if you skip the background reading about it. Search for the topic online in knowledge repositories, industry-specific websites, scientific journals, etc.
4. Not identifying all the subject features or Not construing what to find
A clear understanding of the scope of the invention is essential for an excellent search. If the invention features are unclear, this will result in a vague search. Demarcate invention into distinct, essential, and searchable features. It will help you in the proper formulation of search queries that cover all aspects of the invention. If in doubt about the features, double-check with the inventor.
5. Searching only in free patent databases
The coverage of the free databases or the search functionalities they offer do not rival what commercial patent databases such as PatSeer provide. Even if you are searching across multiple free databases, you would still run the risk of missing out on many relevant records. With so many inventions being published by non-English authorities such as China, Japan, and Korea, etc., the quality of translations can make a big impact on your search results. Further, if the search project is critical and budget and time aren’t an issue, it would be best to search in more than one commercial database. It would help account for any variation in data coverage, translations, data organisation, and retrieval of patents in different databases.
6. Not understanding the search platform capabilities
Knowing your search platform’s searching capabilities before running your patent searches will help save time, formulate better queries and get you optimal search results. So, make sure you go through the features provided by the search platform to get the most out of it.
7. Search strategy formulation with different approaches or Mistake of keeping search query either too broad or too narrow
If you keep your search too generic to make it broad, you retrieve a large number of non-relevant results, and it would be a long-drawn-out screening process before starting the actual analysis. On the other hand, search only a few specific terms, and you miss out on relevant documents. You can be assured of an optimal search if you use a combination of both broad and narrow approaches.
8. Making syntax mistakes
The most common type of syntax mistakes includes –
Wrong use of parentheses with operators. E.g. – TAC: (lung OR kidney AND cancer). Always remember with different operators, enclose each query portion in brackets.
The correct way would be – TAC: ((lung OR kidney) AND cancer).
Each database has its own set of truncations, wildcards, Boolean and proximity operators, etc.
Proximity operators like ADJ, NEAR, SAME, or WITH are as common as w#, wd#, ws, wp and you should know which ones are applicable for your database. Also, every database may not use them or using them in a different context. For example, $ can mean exactly 1 character in some databases, while it can mean 0 or 1 character in others. So, don’t make the mistake of using the same operators, truncations, and wildcards in various databases. Modify your search strategy according to the database functionality.
Another frequent searching error is the incorrect use of the NOT operator. When a search term is coupled with a NOT operator, all documents in which that term is present will not be included in your search result. Use NOT operator only to exclude specific terms which might give junk results or to remove duplicate results.
9. Not considering all synonyms and spelling variations of the subject features
Many patent searchers make the mistake of using only a few synonyms (different terms and phrases) of the key terms in their search strategy. Find all possible synonyms and related technical terms.
Example – synonym list for carbon nanotubes OR CNT
single-wall carbon nanotube OR SWCNT, multi-wall carbon nanotube or MWCNT or nested single-wall carbon nanotube or double-wall carbon nanotube or triple-wall carbon nanotube or bucky tube or carbon fibre nanotube, and carbon nanotube array, etc.
Another commonly overlooked aspect is not taking into account the spelling variations. One word can have more than one accepted spelling. It is especially true with American and British spellings. For example – catalyse or catalyze; tumor or tumour; anemia or anaemia. Ensure that all you have covered for all spelling variations of your keywords and synonyms in your strategy.
PatSeer has multiple utility tools such as semantic suggester, autofill and synonym suggester to help you avoid missing important alternatives for the words in your search query.
10. Factoring hyphen and knowing how the database treats hyphens
An often missed out factor by patent searchers is representing terms with or without space or hyphen. Similar to spelling variations, you must also be list down space or hyphen variation for the search terms used for making a search strategy. E.g., bucky tube mentioned above can be written as buckytube or bucky-tube. Or carbon nanotube can also be written as carbon nano tube or carbon nano-tube. Check how your database is indexing hyphens or space, and accordingly include these variations in your search strategy.
11. Not using classification codes or not combining them with your keyword strategy
Patent documents are categorised into different technical areas, as per the subject matter, and are given specific hierarchical codes by patent examiners globally. These include universally accepted International Patent Classification (IPC) or Cooperative Patent Classification (CPC) or Japanese FI and F term classification or Locarno classification for designs. It is an extremely useful tool for a patent searcher to retrieve patents belonging to a specific technology. Since these classification codes are independent of synonyms, language, spelling differences, and typing mistakes, they are of immense help in uncovering patents not having specific keywords of your search strategy. If your keyword strategy alone results in too vast a data set, you can narrow them down using pertinent classification codes.
12. Ignoring dependent classes during classification search when searching the full class
Another blunder with patent searchers who use classification codes is searching a specific full class forgetting that it will not search the subclasses dependent on the main class. E.g., searching for IPC C01G 21/00 (compounds of lead) would only search for patent documents assigned with this IPC and not the other 12 classes dependent on it.
Table1: International Patent Classification hierarchy for C01G 21/00#
WIPO IP portal – IPC publication
PatSeer provides a classification sub-tree search feature that allows you to search across the hierarchy with ease.
13. Mistakes in searching in relevant fields
Be clear about which fields to search in according to the purpose of your study, like title, abstract, claims, full text, other bibliographic data, etc. You may miss important documents if you search only in TAC (title, abstract, and claims) for your patentability search or not searching in claims for infringement or invalidity searches. Not only that what keywords to search in which field is also vital. Searching a general keyword like cancer in the description field would give too many hits.
14. Overlook searches in working examples for pharmaceutical patents
Suppose your search is in the pharma domain where you are looking for a chemical compound. Many pharma patents have in their claims a Markush type formula. It would be the working examples in the description field that would include representatives of all the compounds protected under those claims. If your search string has synonyms for a chemical name, you may miss out on relevant patents if you restrict your search to TAC. The working examples of the description of a patent specification usually disclose the best way known to practice the invention to meet the best mode and enablement requirement for a patent. These come in handy for invalidation searches.
That’s all for now. Our objective was to point out some common mistakes most patent searchers may make while searching. We hope the above list proves fruitful the next time you conduct a patent search.
