Novel approach to locate prior art

Locating close prior art provides a critical edge in patent litigation or licensing, by documenting that the patent in question should not have been granted due to anticipatory (102) or obviousness (103) art. However, the prior art defense is contingent upon successfully locating such art. as most law firms have discovered, there is a wide range of outcomes when a prior art search is commissioned. this is dramatically evident when a Joint defense Group commissions 3 searches and compares the results, only to find that while they purport to cover the same materials, the outcomes are dramatically different.

The challenge of assessing the quality of a search is difficult, since attorneys have no way of knowing what critical findings were missed. consequently, they tend to rely on proxies to gauge the quality of a search, e.g. the number of findings uncovered, the total number of databases reviewed, length of the search report, etc. However, there is no evidence that any of these factors correlate with search integrity.
The stakes are high since attorneys make major decisions based on their assessment of the prior art uncovered and perceived search coverage. typical decisions include: 

— Patent acquisitions involving millions of dollars, based on a search report indicating that the patent is solid; 

— litigation, where defendants incur huge liability exposure and a serious professional tab (e.g. $3-$5 million) at trial where the outcome may turn on the strength of the “uncovered” prior art; 

— litigation initiated by plaintiffs against competitors based on a prior art assessment trumpeting their patent’s strength; 

— Myriad licensing demands

It is essential that the searcher have in-depth knowledge of the subject matter in order to conduct an effective search. In a typical search, the prior art may be described using a broad range of terminology, or may be disclosed in an exhibit. a searcher with knowledge of the technology is able to flag important sources as relevant while they may be missed by the “generalist.”

Search Implementation plays an important role in a successful search. this factor is illustrated by the common occurrence of a Joint defense Group authorizing three parallel search efforts that yield wide differences in results. What you see defines perceptions of the relevance of a reference, as well as the likelihood a critical document will be uncovered. this impact is quite subtle, for a searcher can cover the most critical patent classes, yet miss the most relevant art due to the search implementation. 

The decision to cover international sources involves an important bet on where to focus the prior art search. Since it is prohibitively expensive to cover many international regions, a rational means is needed to limit the coverage.

For example, a search covering flash memory technology must cover Japanese art and Korean art, given the important role played by Toshiba and Samsung. German and other european patent art is a rich trove for cases involving video encoding, broadcasting, or automotive electronics. an international search must also keep in mind that these are First-to-File regions, where companies train their technical staff to file patents while tightly limiting publishing articles. For this reason, the patent art tends to be more fertile than literature. In contrast, academics and research institutes are more likely to publish articles than file patents.