Why are Prior Art Searches so Inconsistent?

If you have ever dealt with professional prior art searchers for high technology/science, you know that you can never be sure what report quality you are going to get at the end of the project. Of course, you commission the search because you do not have the prior art information you are looking for. Nonetheless, you expect the search result to be focused and highly relevant to the claims or products of interest. What patent attorneys have typically discovered (and complain about) is that they do not see consistency in the searchers’ outputs. Sometimes, they are right on the money and produce a very concise set of relevant references. Other times, they completely miss the mark and produce a large list of references that waste the attorneys’ time (and their clients’ money) to sort through. Worst of all, this kind of inconsistency exposes a more ominous underlying problem; and that is, the probability that the search has missed very relevant existing prior art is quite high.

We are not saying this is the searchers’ fault. In fact, the opposite. We believe the searchers are not necessarily able to solve this problem no matter how meticulously they search.

The root cause of such inconsistencies, (assuming we take incompetency out of the equation,) can be traced to the fact that the search task actually requires two types of expertise that are not typically found in a single expert. On one hand, you need a search expert who knows all the classification/text search techniques as well as all the tricks of the trade required for quickly and thoroughly searching various/global patent databases and non-patent literature. On the other hand, you also need a technologist/scientist who is an expert in the subject matter of the claims of interest so that she/he can weed out the myriad of irrelevant prior art and confusing/outdated keywords to hone in on what is really relevant and worth considering.

One easy solution that may come to mind is to ask the two experts (the search specialist and the technologist/scientist) to work together to find the relevant prior art. However, this approach is bound to quickly outrun the client’s budget for the project, doubling or tripling the typical cost of a prior art search. Hence, in addition to the two types of experts, you also need a validated methodology so the two experts can work together without wasting time and without increasing the billable hours inordinately, all the while maintaining consistency in finding the relevant prior art. This is easier said than done, of course.

AT GHB Intellect, we have devised and validated a cooperative search methodology whereby the search expert and the technology expert work in an iterative process to quickly zero in on the necessary areas of a database and find and filter the prior art as they go. This way, we maintain consistency, quality, and efficiency in our work product. Moreover, we present to the client not only the search results but also a verbose relevancy ranking of references found. Plus, we provide the intermediary search steps that led to those results. This way the clients can verify for themselves whether or not the search was thorough. All this, provides the level of confidence our clients have come to expect of us.

At GHB Intellect, besides technology/science experts, we have some of the best prior art search experts in the world. They are typically registered patent agents who have performed thousands of searches across US and International patent databases (including Europe, Japan, Korea, etc.). Pairing such a search specialist with a technology/science specialist whose expertise perfectly matches the claims/products of interest, and arming them with our validated cooperative search methodology has produced cost-effective, yet highly reliable and consistent results for our clients.