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


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Stephen Adams (Magister Ltd., UK)

Many people who start in patent information work believe that it is possible to become fully competent simply by gathering new facts about search sources, platforms or procedures. Whilst this sort of knowledge certainly contributes to growing competence, it is not sufficient in itself. The truly experienced professional is one who has been doing the job long enough to have encountered a variety of exceptions to the normal rules of search and retrieval, and who has learnt to identify and circumvent errors in an informed way. In short, experience is gained more by making mistakes, and recovering from them, than it is by proceeding smoothly through the challenges of a routine search. This presentation will give some examples of what a good searcher needs to have in their skill set, and why formal education will never prepare you for every eventuality

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

  1. 1. “To err is human” – growing in experience as a patent information professional International Indian Patent Information Conference 2017, Bangalore Stephen Adams, Magister Ltd. Magister ® is a registered trade mark of Magister Ltd. in the United Kingdom
  2. 2. 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?
  3. 3. The skills matrix for the patent information professional © Magister Ltd 2017 3 T I BP Information science Technical field Patent laws and procedures Business awareness
  4. 4. Information science © Magister Ltd 2017 4 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
  5. 5. Technical field © Magister Ltd 2017 5 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
  6. 6. Patent laws and procedures © Magister Ltd 2017 6 • 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
  7. 7. Business awareness © Magister Ltd 2017 7 • 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
  8. 8. Adding a new dimension – time! © Magister Ltd 2017 8 T I BP T I BP T I BP T I BP T I BP T I BP T I BP But merely adding x years of work (with y different employers) does not necessarily make you a better searcher, either…
  9. 9. An alternative view…. © Magister Ltd 2017 9 T I 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.
  10. 10. 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? © Magister Ltd 2017 10 T BP
  11. 11. 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? © Magister Ltd 2017 11
  12. 12. 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. • What’s gone wrong? © Magister Ltd 2017 12 I BP
  13. 13. 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) • What experience have we gained? © Magister Ltd 2017 13
  14. 14. 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. • What’s gone wrong? © Magister Ltd 2017 14 T I B
  15. 15. Example 3; gaining patent experience • What went wrong? (at the technical level) – several possibilities – including different database coverage and/or document types (website, CCD, DPCI, DocDB….) • Why did it go wrong? (at the understanding 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. • What experience have we gained? © Magister Ltd 2017 15
  16. 16. 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. • What’s gone wrong? © Magister Ltd 2017 16
  17. 17. Example 4; gaining business experience • What went wrong? (at the technical level) – the assignee name used for the search was wrong • Why did it go wrong? (at the understanding 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. • What experience have we gained? © Magister Ltd 2017 17
  18. 18. 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] © Magister Ltd 2017 18
  19. 19. 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! © Magister Ltd 2017 19