II-PIC 2017: To err is human – growing in experience as a patent information professional

“To err is human” –

growing in experience as a patent

information professional

International Indian Patent Information Conference 2017, Bangalore

Stephen Adams, Magister Ltd.

www.magister.eu

Magister ® is a registered trade mark of Magister Ltd. in the United Kingdom

What do we mean by ‘experience’?

© Magister Ltd 2017 2

“We really need a focus in education today

on media competence, on being able to

understand the value of different kinds of

sources, their strengths and

weaknesses…and how you tell [the

difference].”

Jimmy Wales, founder of Wikipedia

BBC Radio 4, 31 Jan 2009

For ‘media competence’, read ‘information literacy’.

But is this really enough?

The skills matrix for the patent

information professional


TI

BP

Information

science

Technical field

Patent laws and

procedures

Business

awareness

Information science


Clearly, a good searcher needs to be aware of :

• best practice in information source selection

• developments in information retrieval

techniques

• application of specialist IT tools to client needs

Note – information science is not the same as

information technology (IT); being a master in

Excel macros does not make you a better

searcher!

I

Technical field


Knowledge of the appropriate technical domain(s)

in which you are conducting searches is vital, in

order to:

• gain credibility with customers

• understand queries and conduct searches

• assess answers and report intelligently

Note – reading a few patents in the field is probably

not enough to keep you up to date with what is

really happening.

T

Patent laws and procedures


• Both the legal and bibliographic aspects of patent

publication can change frequently.

• Attorneys and agents frequently only know the legal

aspects surrounding prosecution or litigation in detail

– they may not know the publication aspects (i.e.

what can be found, when..).

• Maintaining your awareness of changes in

prosecution procedure and national law is not a luxury

– these factors impact directly upon our understanding

of information tools.

Note – it can be difficult to isolate those aspects of law

which we need, from the general legal commentary.

P

Business awareness


• Language skills: reading documents,

transliterating inventor names…

• Politics: national boundaries, country codes,

inter-relationships, signatory status of treaties…

• History and geography: regional patent

systems, re-registration of rights, co-operative

trade blocs, FTA areas…

• General law: other aspects of IP, relationship to

wider national scene, customs and import law…

• Industry developments: who owns whom?

• Business awareness: R&D trails/revisiting old

technology?

• etc., etc…..

B

Adding a new dimension – time!


TI

BP

TI

BP

TI

BP

TI

BP

TI

BP

TI

BP

TI

BP

But merely adding x

years of work (with y

different employers)

does not necessarily

make you a better

searcher, either…

An alternative view….


TI

BP

E

E = experience; surrounding and expanding upon all

other skills.

“Experience is what

you get, when you

didn’t get what you

wanted”.attrib. Randy Pausch/

Dan Stanford

The factor which separates an

experienced searcher from a good

one is their ability to learn when

their existing skills break down.

Example 1; missing information

skills• Scenario: a complex chemical FTO search with respect

to Australian granted patents.

• Approach: commence by identifying appropriate CAS

Registry Number(s) using STN search files, then

transfer to DWPI to add additional indexing to complete

the search.

• Problem: I locate 22 granted AU-B patents in the CAS

bibliographic file

– but there appears to be no corresponding records in DWPI for

any of them, when I try to cross to the other file.

• What’s gone wrong?


T

BP

Example 1; gaining information

experience• What went wrong? (at the technical level)

– we didn’t think through the implications of the summary sheet

claimed coverage (both databases cover AU for the right years)

– using the wrong crossover key between two separate databases

can lead to data loss.

• Why did it go wrong? (at the understanding level)

– the publication number is an inappropriate search term; CAS

and DWPI indexed different publication stages

– in this instance, CAS contains the AU-B numbers and DWPI

only listed the AU-A numbers, which are different.

• What experience have we gained?


Example 2: missing technical skills

• Scenario: For a validity search, I need to locate non-

patent literature pre-dating the filing of a specific patent

on a new form of safety syringe;

– when was the concept first known, and why?

• Approach; use PubMed or a similar literature database,

looking for suitable synonyms in free text.

• Problem; my client tells me that I missed a major

literature review, with all the citations that I need.



I

BP

Example 2; gaining technical

experience

• What went wrong? (at the technical level)

– the search enquirer and the searcher failed to clarify

the background to the search and all the possible

terminology which could be appropriate.

• Why did it go wrong? (at the understanding

level)

– the searcher concentrated on the nature of the

equipment (the solution = syringe) instead of the

injuries which it prevents (the problem = needlestick

injuries)



Example 3: missing patent skills

• Scenario: My client wants to know if US 8544901-B2

(Ford Global Tech LLC) has ever been cited during

prosecution at the German Patent Office.

• Approach: Use standard bibliographic tools to identify

later citing documents

– DocDB reveals that DE 10 2013 212083-A1 cited this

application; but there is no search report on the front page!

• Problem: Is my search accurate? Also, my search failed

to locate that DE 20 2015 102764-U1 also cited the

invention.



TI

B

Example 3; gaining patent

experience


– several possibilities – including different database

coverage and/or document types (website, CCD,

DPCI, DocDB….)


level)

– under German patent law, many patent cases do not

publish a search report at 18 months; but search

results may be in the internal register.

– German utility models never include a search report.



Example 4: missing business skills

• Scenario: I am briefed to perform a global portfolio

search on a Japanese chemical company called

“Nichino”.

• Approach: I search for Nichino or any subsidiaries with

names starting with ‘Nichino’ in the assignee index of

my database.

• Problem: All of my results are filed outside of Japan

– Most of them are for Nichino America, Inc.

– I don’t find any national JP filings assigned to Nichino.



Example 4; gaining business

experience


– the assignee name used for the search was wrong


level)

– industry jargon was used to describe the search target

– Japanese companies are often known informally by

an abbreviated form of their name, which may be

entirely different to their filing name.



Why did the problem arise?

Original kanji Transliteration Formal translation Abbreviated

kanji

Common

transliteration

東京大学 Tōkyō Daigaku University of Tokyo 東大 Tōdai

日本経済新聞 Nihon Keizai

Shinbun

Japan Economics

Newspaper

日経 Nikkei [stock

exchange etc.]

日本農薬 Nihon Nohyaku Japan Agrochemical

Co. Ltd.

日農 Nichino [used as

formal name of

US subsidiary]


Summary

• When things go wrong…

• DO analyse to understand the problem

yourself – DON’T rely on other people’s

description of what went wrong.

• DO talk to colleagues (internal and

external) to get extra insight – DON’T

assume that ‘more training’ will anticipate

every situation

• DO persist – DON’T despair!


Internet

II-PIC 2017: To err is human – growing in experience as a patent information professional