The Limitations of Prior Art Searching by Vince Mariano, Research Consultant to Article One Partners Whenever a prior art

search is conducted, it is always important to communicate both the limitations and the scope of the searches conducted to your client. Its also imperative for searchers to know exactly which sources have been consulted as well as what types of documents could have possibly escaped detection to better define the scope of the searches that were conducted in the technology areas relevant body of literature. The growth of the scientific, technical, and medical literature (STM) Literature continues unabated[1], leaving researchers with an enormous literature landscape that needs to be effectively and efficiently searched. In decades past, many prior art searches were limited to a limited number patents, journal articles, and information that were shared and obtained from an inventors scientific or industry colleagues, but those past limitations have been radically shattered today. Many searchers and search firms advertise about performing comprehensive[2] ,exhaustive[3] or global[4] prior art searches, but searches that actually live up to that billing are rare simply because it is usually impossible to search all of the worlds recorded scientific and technical documentation in many technology areas within a reasonable period of time for purposes of a prior art search. As we know, any type of document that precedes the proposed invention in time is considered prior art[5], and even as more STM literature collections become digitally accessible, the possibility exists that potentially relevant information to prior art searchers may be overlooked during a prior art search because it is either not readily searchable or obtainable. For instance, its important to note that many technical papers, academic publications, conference proceedings and hand outs that have never been scanned or made digitally available reside in a potentially big gap of literature that is unable to be searched electronically by any prior art search[6]. The relative comprehensiveness of any given prior art search also depends in large part on the specific field of technology that the proposed invention resides in. Certain technology areas have readily accessible subject specific digital collections and databases that are more comprehensive than other technology areas. But that caveat aside, the ability for searchers to perform more thorough prior art searches has substantially expanded over the past decade[7], as prior art searchers are now able to search and evaluate an exponentially greater amount of STM literature. The capability of researchers who perform prior art searches is further enhanced by the refinement of more sophisticated search tools that more precisely search patent and non-patent literature, in addition to the digitization of more document collections in the scientific and technology literature that enable searches of the prior art to perform more comprehensive searches of the literature.

Translation search engines[8] are making it easier to query patent and non-patent literature collections to identify relevant prior art, but when a relevant reference is identified that may read on the claims of a proposed invention, the use of translation services is still necessary for a more correct and accurate understanding of the relevant document. Greater numbers of foreign patent offices[9] are making their patent literature accessible and searchable over the web, and not all of them provide English language abstracts to at least gain a general understanding of the patent or publication in question. What the future holds There are already numerous categories of patent search tools, both free and fee-based systems, including tools that perform Deep Web searching[10], Defensive Publication sites[11], Foreign Patent Offices[12], STM Literature Databases[13] (both citation and fulltext), Patent Analytics tools[14], Patent Search Engines[15], and Software and Source Code Repositories[16]. Recently, more comprehensive Intellectual Property Library portals such as IPO.com bring under one roof a wide array of search tools and digital repositories that enable searchers to cast a wider net over the patent and non-patent literature[17]. Semantic search[18] automatically adds related concepts to a searchers query[19], greatly enhancing both the breadth and the precision of any given search. Experienced power searchers should become fully fluent with all advanced search features within a given database for more refined searching to augment their search terms, and we can expect that databases will give searchers even greater ability to more readily identify pertinent information in the future. We can also expect greater numbers of STM literature and grey literature collections from both English and foreign languages to migrate online in the future[20], and greater numbers of these individual documents and repositories will be searchable via federated searching[21] that simultaneously performs a query across numerous platforms, archives, and collections. Where there are gaps in the literature in a particular technology field of art, subject specialists as well as practitioners within the field should make it an imperative to ensure that non-digitized STM literature collections are ultimately scanned, digitized, collected, indexed, and aggregated for purposes of searching. Notes [1] Peder Olesen and Larsen and Markus von Ins, The rate of growth in scientific publication and the decline in coverage provided by Science Citation Index. http://www.ncbi.nlm.nih.gov/pmc/articles/PMC2909426/?tool=pubmed [2] See http://www.mogambosolutions.com/compre_prior_art.htm [3] See http://www.american-patent-agency.com/our-services/prior-art-search

[4] See http://www.globalpriorart.com/bios/index.html [5] Gene Quinn, What is Prior Art? http://ipwatchdog.com/2010/10/02/what-is-priorart/id=12677/ [6] Dean Giustini, Finding the Hard to Finds: Searching for Grey Literature.http://www.slideshare.net/giustinid/finding-the-hard-to-finds-searching-forgrey-gray-literature-2010 [7] Martin Frank, Access to the Scientific Literature- A Difficult Balance.http://www.nejm.org/doi/full/10.1056/NEJMp068004 [8] See http://www.foreignword.com/ [9] Pat LaCourse, End User Patent Searching Using Open Access Sources. http://www.istl.org/10-winter/internet.html [10] See http://www.online-college-blog.com/index.php/features/100-useful-tips-and-toolsto-research-the-deep-web/ [11] http://www.researchdisclosure.com/searching-disclosures/search [12] See http://www.epo.org/ [13] See http://www.ncbi.nlm.nih.gov/PubMed [14] See http://web.ipvisioninc.com/ [15] See http://www.google.com/patents [16] See http://www.peertopatent.com/patent/20100250597/resources/list?tag=repositories [17] http://ip.com/ [18] See http://en.wikipedia.org/wiki/Semantic_search [19] See http://www.lexisnexis.com/semantic-search-1/ [20] 2010 Top 10 Trends in Academic Libraries. http://crln.acrl.org/content/71/6/286.full [21] See http://en.wikipedia.org/wiki/Federated_search