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The Limitations of Prior Art Searching

Article · January 2010

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Vince Mariano
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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. It’s 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 area’s 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 inventor’s 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 world’s 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, it’s 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 full-
text), 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 searcher’s
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-prior-

art/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-for-
grey-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-tools-

to-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

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