Race of finding better prior art that can influence an IPR or patent litigation is the need of the hour. Such searches have become increasingly important in recent times, given the growing number of litigations and IPRs filed every day.
However, locating a bang-on prior art is not a piece of cake, primarily because there is a lot of information that needs probing, and, further, the difficulty of finding the right set of keywords to locate the relevant information.
For the non-technical people out there, you might wonder why it is so difficult to locate prior art? Isn’t a searcher supposed to type keywords related to technology patent databases, get a set of patents, read each one of them and then tell whether the patent serves as relevant prior art or not?
If not in patents, a researcher must try to find prior art in images.
Thus, in a nutshell, finding prior art is not that complex, is it?
To answer this, it is important to understand the factors that impact the probability of finding relevant prior art.
What are the factors?
Quality of searching is highly reliant on the technical knowledge and experience of the Searcher
No matter how experienced the researcher is, there is a possibility of missing information not because of human error, but because of the fact that there is a huge amount of information to be scouted, the technology could be described in various ways (sometimes intentionally hidden) and that information can only be found by the usage of appropriate keywords which is practically required in every search engine.
What do appropriate keywords mean?
Allow me to explain with an example.
Consider the word Mobile phone (yes, the most common example that is taken during a patent search training process).
Getting back to the point, let us try to list how many synonyms one can think of for a Mobile phone.
You might feel that it’s quite easy and one may never miss on any other word of how mobile could be represented.
Seems like a walk in the park. Isn’t it?
Not really.
Why?
Because –
Patents are very inconsistent in the use of technical words – sometimes, inconsistency being introduced intentionally
As we know, in many situations, patent drafters/inventors try to coin their own terminology in their patents. This creates a limitation on the searcher side, as these words are not standard that people can learn from other sources (e.g. articles, journals, etc.).
Many searchers try to cover as many variations as possible by collecting all the appropriate keywords that they can think of. For example, a searcher looking for a mobile phone with Bluetooth will start by consulting various websites that provide a dictionary (e.g., thesaurus.com) to compile a set of keywords.
Let us see what kind of keywords for a Mobile phone we can get from Thesaurus, WordHippo, and Synonym.com.
As we can see, there are various general keywords. However, these online dictionaries do not provide the correct synonyms for technical terms.
So, what searchers usually do is gather such keywords (as well as some general synonyms like wireless telephone, radiophone, and cell phone, which might already be known due to their prevalence) and start the search using them.
While they read the patents, they might (or might not) come across a few more keywords during the analysis. Now, this is sure to be a very time-consuming process, and it is fairly possible that many pertinent keywords (specifically referred to by patent inventors) don’t even pop up during the analysis, and thus remain unexplored.
That is a huge problem because it reduces the likelihood of finding relevant prior art. In such cases, even if the prior art exists, its low discoverability can lead to defendants paying millions in infringement royalties for a patent that was essentially invalid.
You must be thinking, “In the Name of Lucifer, that’s a huge problem!”
But let’s not forget: “There exists a solution to every problem.” Sometimes, the solution is easy to spot and emerges after a bit of work, and at other times, you have to tread unexplored territory to pave the way to the solution.
For the given problem, we took the latter approach and found a solution.
Neo – The Tool that helps us find Bang-on Prior Art By Suggesting all the Appropriate set of Keywords
At GreyB, we developed a tool, ‘Neo’, which does the trick for us.
What’s Neo?
Neo is a keyword suggestion tool designed to bridge the gap between searchers’ knowledge/common keywords and a perfect search query.
This tool helps us identify most keywords that are not necessarily synonyms but are used in place of the desired keyword. It also helps us reduce the time to reach the relevant set of results. This implies more efficiency for the end client.
Getting back to our original example, let us see the synonyms provided by Neo for Phone and Bluetooth.
We can see that, apart from returning all the general standard keywords, it has intelligently listed keywords that are more likely to be used in patents or technical literature.
E.g. – WTRU, UE for phone, and keywords like Homerf, IEEE802, NFC, and Zigbee, for Bluetooth. Apparently, finding such keywords increases the chances of better results.
Here are some other keywords provided by Neo for different terms.
Normally, it would be very difficult to think of such keywords, or even if we come across them after some analysis or exploring through plenty of documents, capturing all the appropriate keywords (or better to say the right keywords) to locate required information is actually a tedious task, which is often ignored.
But with Neo, all these problems could be easily solved, increasing the chances of finding bang-on prior art.
After all, finding the relevant prior art is a priority, ain’t it?
Authored by Rohit Jaswal, Manager, Search Team, and Mohak Raitani, Research Analyst, Search Team.
Do you also know why: Only a few patent search firms could help you find good prior art. Understand the reason behind the statement here – Why only some patent search firms can help find good prior art?