Best Practices to conduct Mechanical Prior-Art Searches – Webinar

For every business unit, it is crucial to conduct quality mechanical prior-art searches before filing a patent to avoid the rejection of patent during the examination phase. Thus, prior-arts will help in saving time and money spent on filing the patent and also help the inventor to design or do some modification in the light of existing prior arts to come up with a novel invention which might be patentable.

Table of Contents

Key-points Covered in this Webinar (Best Practices to conduct Mechanical Prior-Art Searches) Session:

  1. Construct optimized/time constrained strategies for mechanical prior-art searches?
  2. How is a relevant classification-based search strategy useful in conducting structure-based searches?
  3. How clear structures or figures of the invention makes it easier to search. E.g. customised table.
  4. How NPL or general product search can help you in searching patents?
  5. How an application-based invention can be searched in various other domains? E.g. Nut with an additional chamfering.
  6. When & why an invention needs to be searched for Utility and Design patents?

Key-note Speaker

Shubham Tyagi, Project Manager, Sagacious IP

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Webinar Transcript

Tanmay Mittal – Hi Everyone!

Welcome everyone to the webinar! This is Tanmay Mittal, Head of IP Solutions, India Region at Sagacious IP, signing in to welcome you all to our webinar today.

In our endeavour to demystify IP information and contribute towards boosting IP awareness, Sagacious IP is happy to host today’s webinar which will not only throw light on best practices for searching prior-art information, but we’ll showcase some tips and tricks for searching inventions in the domain of mechanical engineering. The topic for our today’s webinar is “Best Practices to Conduct Mechanical Prior-Art Searches”.

Before I go on to introduce our speaker for today’s session, I’m delighted to welcome all the participants from different countries and thank them for taking out the time to join us today. As I always say, your participation is a wonderful encouragement to the efforts and attempt that we are making to raise awareness about intellectual property through the knowledge that has been honed by Sagacious IP over several years of working with Inventors, R&D organizations, IP departments, and IP law practices.

So without any further wait, let me introduce our speaker Mr. Shubham Tyagi. He is managing a young and dynamic team of sharp engineers in the domain of Mechanical Engineering at Sagacious IP. He carries an extensive experience in the intellectual property domain and has a knack of searching patent information on several databases and patent office websites. In his previous experience, he has been associated with a lot of reputed Fortune 500 clients, helping them with FTO, Invalidity, and Novelty Searches.

Welcome to the webinar Shubham.

Shubham Tyagi – Thank you Tanmay. Thank you for the kind introduction.

Tanmay Mittal – Also, as you may know, Sagacious IP is running an array of webinars in the same context so researchers understand all the best practices to perform comprehensive searches on their own. The next webinars will be on how to search non English patent literature comprehensively, including Chinese, Japanese, and Korean languages. The one after that would be on top tips to search design patterns in various geographies.

Quick Poll

Let us now get started with the main part of our presentation. Before I ask Shubham to begin his presentation, I have a quick poll for our audience today. I hope you can see the poll question. So, the question is: what makes mechanical searches different than other searches or searches from different domain?

  • Descriptive drawings
  • Existence of very close prior-arts
  • Common knowledge of the top assignees or companies in that technology

What, in your opinion, should be an answer over here? Since the webinar is focused on mechanical searches, so I thought of posing a quick poll first.

Interestingly, 71% of us believe that it is because of availability of descriptive drawings, the remaining people either believe in existence of very close prior-arts because of incremental inventions and the remaining believes in the concept of common knowledge of top assignees or companies.

What Mechanical Means

Before we go in depth, let’s take a look at what we mean by the word mechanical and set the context for our listeners.

What do we mean by the word Mechanical?
Fig. 1 What Mechanical Means

So in contexts of patents and technology, mechanical inventions are more related to structural and functional working aspect of a system. Let’s take a quick look at few examples. The first one you see on the screen is a propeller. The next one is a UAV that is unmanned air vehicle, and the third is related to automobile. This image is from an axel load monitoring system.

Structural or functional  working aspects of various elements or components: Propeller, UAV, and Axel Load Monitoring System
Fig. 2 Propeller, UAV, and Axel Load Monitoring System

I’m sure that our listeners will acknowledge that there are numerous inventions which have a functional and structural aspect, and thus they belong to the family of mechanical inventions. With this, let us now begin our today’s presentation.

Typical Milestones while Performing a Prior-Art Search

Through this infographic, I’m trying to lay down the obvious steps or milestones covered while doing a typical prior-art search from developing a thorough understanding till reporting the results. All these steps are tested and practiced worldwide to ensure comprehensiveness and accuracy in prior art searches.

Typical milestones while performing a prior-art search
Fig. 3 Typical milestones while performing a prior-art search

In our today’s webinar, we will not dwell over these steps in details, but we’ll focus on the best practices associated with these steps and see how these best practices can help you while performing a prior-art search on a mechanical invention.

Thorough Understanding

The first milestone is to develop a thorough understanding of the invention. The invention description and the visualization of the working principle from the images shared by the inventor are the most important aspects here.

For a better understanding of the invention, we recommend doing the preliminary search on databases like Google, Bing, and other search engines. A quick tip here is to refer to the videos on YouTube for a better understanding of the working principle and the components of this system.

The first milestone is to develop a thorough understanding of the invention
Fig. 4 Thorough Understanding of the Invention

Best Practice – Take Help of Invention Disclosure Form

However, the best practice is the utilization of invention disclosure form. I’m sure many of our listeners are aware of this best practice as this is being followed in almost all organizations worldwide to capture innovation from their R&D teams.

This invention disclosure form also known as IDF, focusing on few very important questions like: what is the difference between prior-art documents and your invention? How is your invention better than the prior-art? What is the novelty of the invention?

If we can get an IDF before the search, then it generally solves a lot of thing. We suggest getting on a call with the inventor and asking these questions to him. Thus, asking the right question to the inventor helps us to develop a thorough understanding of the invention.

Take Help of Invention Disclosure Form
Fig. 5 take Help of Invention Disclosure Form

Let us understand it by one of the case studies. In one of the projects, we received two images shown on the left side of the slide about the invention. One is depicting the novel aspect of the invention and other is of the final assembly of the system. But from this input, it is not clear what the function of other components associated with this novel aspect is. One of the best practices in these cases is to utilize the invention disclosure form and do a search using the name of inventor and company to identify the closest prior-art previously filed by the same inventor or assignee in the same technology area.

This helps us to fetch the relevant information to make a better understanding of the invention. In this case, we came across a document as highlighted at the right bottom portion of the slide which is depicting the internal working mechanism of all the components situated in the system. This basically helped us to understand the working principle behind the invention. Now, our question to the inventor will be focused on novelty and the difference from the product.

Designing Search Focus

Now, let’s understand the next milestone and what the associated best practices under this milestone i.e., Designing Search Focus will be. After developing a thorough understanding of the invention, we must start our search in such a way that most of our efforts are in the correct direction. Thus, we have to adopt a framework through which we can prioritize our time and searching efforts.

VED analysis - key features generation
Fig. 6 VED Analysis

A popular concept of industrial engineering is VED analysis, where V stands for Vital, E for Essential, and D is for desirable. This concept is applicable to patent industry as well. Whenever you receive an invention, then each invention has a vital aspect which is the main inventive aspect of that invention and majority of the search efforts should be focused on this part. Apart from this, there are essential aspects available in the invention. These are the essential key features of the invention and prioritize against the rest of the key features, and the rest of the key features are the desirable key features.

Best Practice – Prioritizing Key Features Allows You to Put Efforts on Critical Aspects

Let us understand this with an example included in the next slide.

Prioritizing Key Features Allows You to Put Efforts on Critical Aspects
Fig. 7 Prioritizing Key Features of the Invention

Here, we have taken an example of a foot wearable assembly in which the vital key feature is that the shoe is integrated with a sleeper. The essential key feature is that the shoe is integrated with sleeper by zipper mechanism, and in the fully assembled state, the zipper is not visible.

Finally, the desirable – the desirable key feature is that the shoe can be with laces or without laces. Therefore, based on VED segregation of these key features, we are able to identify those key features on which we need to put our maximum efforts. For this, the first vital part of the invention needs to be identified and after that we can put our efforts to identify essential and desirable part of the invention.

Best Practice – Sharing Calibration Document

Now, moving on to the next point that is the calibration point. After making the understanding and segregation of the key features on the basis of VED analysis, we should share a calibration document with the inventor.

A calibration document is a document in which we can indicate various aspects of the invention and share it with the client. As we have already discussed the vital, essential, and desirable key features in the last slide, these key features can be included in this calibration document and can be passed to the client so that we are on the same page with the client where the maximum efforts will be distributed during the search.

Sharing Calibration Document
Fig. 8 Sharing Calibration Document

For example, in this particular case, when we shared the key feature with the client, he revert to us and told us that there is also an additional essential key feature of the invention that is the zip is not visible from outside in the integrated stage, whereas, earlier, we were not aware about this key feature. After discussing it with the client, we came to know that this key feature is an essential feature of the invention as per the client feedback.

Therefore, by sharing the calibration document with the client, we are aligning our understanding with the client’s requirement and expectations.

Search Strategy Formulation

Now, we have developed the thorough understanding of the search, and the search focus is already clear to us and also calibrated with the client. Then, let us see how a smart search strategy can be created to assure that the relevant results are not missed.

Standard approach to conduct patent searching
Fig. 9 Standard Approach to Conduct Patent Searching

Generally, as a standard practice, various type of search strategies are formulated and run on various databases to make sure that the relevant results are not missed. These are generally those search strategies which are performed by many individual persons or many organizations. We have captured some of the search strings here. These can be Term Set Based, Classification Based, or the combination of Term Set or Classification, and at the same time Prolific Assignees and Inventors’ related Strings can also be run. Similarly, other search strings can be formulated so as to avoid the chances of missing a relevant prior-art.

Search Strategy Formulation - Best Practices
Fig. 10 Search Strategy Formulation – Best Practices

Moving on to the next slide, we will see what can be some of the best practices under this milestone i.e., the search strategy formulation as this is the main step which will make sure the relevant documents are being captured in our search strategy even if we have good databases and technical subject matter experts. If we are not considering the good practices that are being captured under this section, there are chances that we might miss some relevant results. We have tried to showcase maximum best practices under this section. These best practices will be discussed one by one in the next consecutive slides.

Best Practice – Smart Usage of Search Operators to Minimise False Positives 

This is the first best practice in the milestone of every search strategy formulation which is related to the smart way of using truncation in the keywords or synonyms. We generally use different truncations in all the databases, but we have to learn how to use these truncation operators more smartly.

For instance, I have taken few examples. In the popular patent databases, these are the general nomenclatures. Let us see. If we use these truncation operators in our Term Sets, what kind of false hits will be captured?

In the first example, we have put the sign of interrogation after the word Car, so the intended outcome was Car or Cars. However, the usage of this particular truncation operator has also captured the word Card which is false positive and is not captured.

Smart Usage of Search Operators to Minimise False Positives
Fig. 11 Smart Usage of Search Operators to Minimise False Positives 

Similarly, I have taken another example here. The intended outcome we were expecting was related to Tires. By using this type of truncation operator, what exactly happened is that we have also captured the term Three which is also a false positive, because three was mentioned at many places in the patent document due to which a lot of false hits are captured in our search strategy. We have to be smart in deciding our operators while executing these search strategies.

Best Practice – It is advised to run Targeted Keyword Based Query to address Issues Pertaining to Wrong Classifications by the National Patent Offices    

Moving on to the next slide, we have taken another example to show the case why it is necessary to run only targeted keyword based search query to address issues pertaining to wrong classifications by the National Patent Offices. In our experience, we have observed in certain cases where patents are classified under wrong classifications.

Advised to run Targeted Keyword Based Query to address Issues Pertaining to Wrong Classifications by the National Patent Offices
Fig. 12 Targeted Keyword Based Query to address Issues Pertaining to Wrong Classifications

For instance, we have taken the example of an Indian patent which will look at the image or technical subject matter of the invention. It is related to the domain of an outer rear view mirror assembly in the automobile. Here, it is classified under a wrong classification related to physics that is measurement of nuclear or x-ray radiation by the National Patent Office of India, whereas it should be classified under the classification B60R 1/06 which is pertaining to rear view mirror arrangement mounted on vehicle exterior.

Since the National Patent Office has not classified it correctly. This result might have been missed in this search strategy if our all strings restricted to the relevant classification of the domain. We need to understand this aspect and should run at least one of the search strategies without the restriction of any classification. This is purely Term Set based or Keyword based search strategy in order to avoid any instances of missing a relevant document.

Best Practice – Replication of the Search Strings using Native Language Keywords provides Better Chances of Capturing Non-English Results  

Our next best practice is related to the replication of the search strings using native language keywords as it increases the chances of capturing the non-English results due to the possibility of translation errors.

Suppose an invention for which you are performing the prior-art search. For that particular invention, most of the prior-arts are published in Chinese, Japanese, or other non-English countries. So, for that, it is recommended that we should not just rely on English language keywords, but we should also use native language keywords to perform such searches.

We have access to a lot of paid databases, and they have flexibility to run search strings in multiple native languages, and we should basically utilize this particular key aspect so that relevant result is not missed due to translation errors.

Replication of the Search Strings using Native Language Keywords
Fig. 13 Replication of the Search Strings using Native Language Keywords

As you see on the left side, we have converted a string by using native language keywords. Further, as you can see on the right bottom side of the PPT, we have compared various paid databases which have different capabilities to run the search strings in different jurisdictions and in different languages along with different full text coverage.

Therefore, on the basis of country of interest, one of the databases can be chosen, and it can be useful in order to conduct a comprehensive search.

Best Practice – Assignee Corporate Tree for English and Native Searches

Another best practice is related to the formation of assignee corporate string for English or Native language Assignees. Sometime, this search involves prior-art searching for the assignees related to non-English countries. In that case, the search should be run by Native Language Expert, and at the same time those search strings should be run on Native Databases also.

Once they have run the search strings and fetch the result, then those results can be provided to the relevant people who can analyse those patents through machine translation of those results. Since coverage of native databases will be more, so we will be eliminating the risk of missing any relevant prior-art.

And if there is no constraint of the budget, then it is recommended that the Native language experts should analyse those results in the native language only so as to further eliminate the possibility of misinterpretation of the relevant prior-art due to translation errors.

Assignee Corporate Tree for English and Native Searches
Fig. 14 Assignee Corporate Tree for English and Native Searches

For example, we have taken an exemplary company which is a Chinese company. If we just rely on English Corporate tree, then we might miss certain results. So, it is always advisable that if you have in-house strength or access to native language experts or native language speakers, then for these companies, the corporate tree string should be formed by native language experts on the native databases.

Further, while forming assignee string in English language also, we should not completely rely on the automated Corporate Tree features of the paid databases as they are not accurate. We should do manual check by extracting the details of subsidiaries or merger and acquisitions of these assignees through various sources such as SEC Filing, Annual Reports of those Companies, or Bloomberg.

This is also useful as recent merger and acquisitions are generally not considered or included in the automated tool of extracting the corporate tree of assignees in most of the paid databases. Therefore, this is again a good practice under search string formulation in order to avoid the instances of missing a relevant prior-art.

Best Practice – Do not overlook Broader Classifications

One of our next best practices under the milestone search strategy formulation is that we should not overlook broader classification.

We have taken another example to show why it is necessary to run a search string comprising a broader classification. In that experience, we have observed certain cases where patents are classified under broader classes rather than their corresponding narrow bang on classification.

For instance, we have taken the example of an Indian patent which as we look at the technical subject matter of the invention is related to an arrangement of button operated outward swivelling motion of the conventional rear view mirror. So, the invention is related to a rear view mirror.

Do not overlook Broader Classifications
Fig. 15 Don’t overlook Broader Classifications

However, it is classified under a broader classification that is optical viewing arrangement. If the Examiner of Indian Patent Office has classified it under the relevant classification, then it should be B60R 1/072 which is pertaining to more relevant subject matter of the invention that is rear view mirror arrangement mounted on vehicle exterior with remote control for adjusting the positioning by electrically powered actuators for adjusting the mirror relative to its housing. The National Patent Office has classified it in a broader classification. This result might have missed in this search if all our search strategies are restricted to the relevant, narrow bang on classification of the domain.

We need to understand this aspect and should run at least one of these strategies with the restriction of broader classification such as B60R 1 or even B60R in order to avoid any instances of missing a relevant document.

Best Practice – An Invention on ‘Check valve’ Used in Braking Modules of a Vehicle can also be used in Medical or Household Applications

The next best practice is related to the application area of an invention. For this, we have taken an example of a “check valve” in braking module. We can start our search with the domain of braking module in an automobile. Once we have exhausted our search strategies in this domain, then we should run certain search strategies by getting rid of the domain of automobile and run some general search strings smartly, and then there are chances that we can identify a document of similar check valve in other application area.

For instance, in this particular example, a check valve was related to an automotive domain. However, when we had performed an open search without restricting it to the domain of automotive, we have identified a similar check valve in the medical application. So, in some instances, if we are not able to identify the similar invention in the specified application area of the inventor, then we should broaden our search scope by avoiding the restriction of our search strategies with any of the application area.

An Invention on ‘Check valve’ Used in Braking Modules of a Vehicle can also be used in Medical or Household Applications
Fig. 16 An Invention on ‘Check valve’ Used in Braking Modules of a Vehicle can also be used in Medical or Household Applications

It is also one of the best practices that we should get rid of the application area. It will increase the likelihood that you may find a similar result in other application area like in the example shown below where similar check valve is identified in the medical domain.

Tanmay Mittal – In this poll, we want to understand which of the following makes the search strategy robust and comprehensive according to you? We just saw some of the best practices, and we thought of rolling this poll. Do think it is eliminating the false positives or do you think removing the classification errors or using the broad classifications makes more sense and makes a strategy more robust? Do you think we should be exhaustive in performing non English language searches as well or do you think corporate tree does it all?

So, again, which of the following do you think is contributing in making a search strategy more robust and comprehensive? Of course, no wrong answers; no right answers. We just wanted to know how you feel about it. So, the options that we have are eliminating false positives using truncations, removing classification errors; using broader classification, searching in non-English jurisdictions, utilizing corporate tree function, or you think it’s all of the above. You should use all of the above.

I’ll let this poll run for another minute. I would say another 30 seconds, and then we’ll close it. We’re getting some interesting responses. Majority of the people are inclined towards either removing the classification errors or saying that all of the above should be done.

We have some votes for eliminating false positives as well. Another few seconds and we’ll close the poll. Great, so, I’m closing the poll now, and the results say that most of us feel that we should use all of the above practices. And interestingly, 25% voted saying that classification forms an important aspect, so we should do broad classifications and we should try removing the classification errors, and then 13% said that we should focus on eliminating false positives during the keyword based search.

Shortlisting Potential Results

Shubham Tyagi – We have formulated the search strategies smartly and believe that we have captured all prior-arts. We will be performing the search and identifying the relevant documents. While analysing those document, we will also be shortlisting those documents simultaneously. This is a quite obvious step, but I will like to include one of the best practices under this section.

Best Practice – In Design Patent Search, Similar Design and Structure of the Invention can also be identified in Utility Patents/NPL/Product Searching and Vice Versa  

Under this milestone, I have included a best practice related to utility as well as design search. We are aware of in the mechanical searches both utility patents as well as design patents can be protected. So, In case we are performing a utility patent search and we are already able to identify all the functional aspects of the invention. And in case just the structural aspects are pending, then we can also do a quick searching in design patent databases as well.

In Design Patent Search, Similar Design and Structure of the Invention can also be identified in Utility Patents/NPL/Product Searching and Vice Versa
Fig. 17 Similar Design and Structure of the Invention can also be identified in Utility Patents/NPL/Product Searching and Vice Versa  

Similarly, vice versa is also true, in case we are performing a design search and didn’t find any relevant prior-art in the design patent search. Then, we can also do some additional searching in utility patents or NPL or products searching to identify a closer prior-art similar to the requirement. Many times, this type of such strategies allow us to get better set of results that can be shortlisted for the report preparation.

Critical Analysis

Now, we have shortlisted the results and let us see what are the best practices can be considered while analysing those results.

Best Practice: Inference vs Assumption

One of the best practices under this milestone is to draw the line between infer and assumption. To depict this, we have taken one of the examples. From the image, we can infer that the top cover of the cooking grill looks like egg shape or oval which is highlighted in red. Such things can still be inferred.

Inference vs Assumption
Fig. 18 Inference vs Assumption

However, if we take another example, in which, just by looking at this image, one can’t say whether the flaps, which is highlighted in blue colour, are fixed or pivotable. Therefore, if we infer the key feature of pivotable flaps by referring this image, then it would be an assumption to say that the flaps are pivotable as it can also be fixed.

Best Practice – Considering Various Embodiments/Family Members of a Patent while Analysing/Mapping

Another best practice while analysing the document in mechanical searching is that various embodiments are generally possible. We should look at all the embodiments as well as all the family members while analysing or mapping the results.

Considering Various Embodiments/Family Members of a Patent while Analysing/Mapping
Fig. 19 Considering Various Embodiments/Family Members of a Patent while Analysing/Mapping

For instance, here is one of the examples where we can see in the middle, the figure number 80 is depicting an embodiment, which was relevant to our invention while there were multiple other embodiment or images which were not relevant to our study. This is, again, generally considered as one of the best practices.

Final Findings

Now, we have covered all the milestones and the last milestone is regarding to the deliverable of all the final findings that we have accommodated through different checkpoints or milestones.

Best Practice – Summary of the Findings should assist the End Client to clearly identify the “Patentable Subject Matter”

Let us see what can be the best practice that can be used to depict the report of all final findings. In this best practice, we provide a Tic Tac Toe mapping of all the identified closer prior-arts from where we can depict the patentable subject matter of the invention. Here, the key feature 3 is a gray area, and it is evident by looking at the key feature mapping that there are chances to draw a patent application in which patentable subject matter is around key feature area.

Summary of the Findings should assist the End Client to clearly identify the “Patentable Subject Matter”
Fig. 20 Summary of the Findings should assist the End Client to clearly identify the “Patentable Subject Matter”

The tick mark is pertaining to the explicit mapping, and the other portion of the mapping is depicting an inferential mapping that is highlighted by pink colour, and the green colour mark is for the partial mapping.

For example, if document, which we have identified, only discloses a limited portion of that key feature, then still there is a gray space on which patent can be filed for that particular invention.

Best Practice – Mechanical inventions allow you to report your findings in such a way that by just going through a one page summary, the exact inventive concept can be quickly understood 

Another best practice is to report the identified results. For instance, sometimes, the end user of a prior-art search is a person who is not a patent attorney but he is more from a technical background or that person is not very much familiar with the write-up of the patent or all the legal terms used in the patents. We can provide this type of summary in which we can highlight multiple sections. This can be provided in such a way that a person who is from an R&D background can understand the main inventive concept of that patent just by looking at a single slide comprising the information related to the field of invention, background of invention along with the problem statement and advantages and finally the summary of the patent depicting the novel aspect of main functioning of the invention.

Mechanical inventions allow you to report your findings in such a way that by just going through a one page summary, the exact inventive concept can be quickly understood
Fig. 21 Mechanical inventions allow you to report your findings in such a way that by just going through a one page summary, the exact inventive concept can be quickly understood

Similarly, another way can be used to showcase our findings in this type of representation. This has been taken from our in-house tool that is Fast Science. Such visualization, again, helps the R&D team in absorbing or understanding the findings in an easy manner.

Hot Spot Concept
Fig. 22 Hot Spot Concept

Here, by clicking on number depicting individual components, you will get to know structural or functional aspect of that element in the overall system.

Best Practice – In FTO searches, threat perception in different countries should be indicted, and client should be able to understand how the product is infringing a particular patent

Again, one of the best practices to report FTO searches can be provide a threat perception chart shown at the right top side of this slide. Suppose you are performing and FTO search in multiple countries, then depending upon the results, you can show that there is high threat in one of the country. In another, there is moderate threat, and in the rest of the countries, there is no threat.

In FTO searches, threat perception in different countries should be indicted, and client should be able to understand how the product is infringing a particular patent
Fig. 23 Threat Perception

You can the summary sheet depicting red for the high threat orange for the moderate threat, and green for no threat. Similarly, for identified results, we can also provide a claim chart mapping through which client can understand how exactly his or her product is infringing on the claims of the identified patents.

That’s all from my side. These were some of the best practices that we wanted to cover in the session.

Questions and Answers

How Many Search Results Typically Being Reviewed in a Mechanical Search?

Tanmay Mittal – Great, Shubham! Those were some really good points, and I have a multitude of questions coming over to me. Let me just voice them out so you can answer them. The first question we have from our listeners is: How many search results typically being reviewed in a mechanical search?

Shubham Tyagi – It totally depends upon the subject matter of that invention. If the invention is more related to the structural aspect, then we can analyse the total number of result set, say, 2000 or 3000 as we just need to go through the images rather than getting into the depth of the patent. On the basis of the structural aspect, we can analyse a lot of documents. If the search is more related to the method claim or process oriented claim in which we need to go through the context of each and every patent, then, in those cases, we generally review 500 to a maximum of one thousand patents. This variation depends on the type of search we generally use to perform.

For example, in case of novelty searches, we can restrict ourselves up to certain limit. In case of the projects, where the stakes are high, such as Invalidity Searches and FTO searches, we do not restrict our search to any sort of number unless and until we carry out an exhaustive search.

Tanmay Mittal – This is subjective. It varies based on the kind of search and the kind of importance of those searches and also based on the technology or the structural or the process flow.

Out of the Complete Result Set You analyse, How Many of Them are not in English?

Another part of this question is: you analyse N number of results and how many of them are not in English? Out of the complete results that you analyse, how many of them are not in English?

Shubham Tyagi – It, again, basically, depends upon the technology area. If the invention is related to that technology area where maximum filing has been carried out in non-English jurisdiction, then there will be a lot of number of patents that we need to analyse by machine translation. In that case, we prefer to hire a native language expert who can analyse those documents. It totally depends upon the stake of the projects.

In normal cases, we generally do have other family members which are English members. There is limited number of results sets which only comprises of a non-English jurisdiction member. Generally, we have America or UK, which have patents in English. We can rely on those jurisdictions while analysing those patents rather than analysing non-English patent by just relying on translated English.

Do You Use Native Language Experts for analysing non English Patents?

Tanmay Mittal – A follow up question on that question from another attendee is: Do you use native language experts for this, or do you do it yourself?

Shubham Tyagi – It depends, from cases to cases. In some of the cases, when the stakes of the project are high, we, generally, use to have the help of our Native language expert, who carries out all the analysis, starting from the search strategy formulation and reporting the results as per his or her analysis on their native language databases.

If the budget of the client is limited, then we prefer that the Native language expert just replicate our search strategies and run those search strategies on their native language databases, and give us the result set of extracted patents which we further analyse on our available sources through machine translations. This, again, depends, from project to project, depending upon the stake of the project and budget of the client.

Tanmay Mittal – It’s more of a hybrid approach wherein you ask the native language expert to run a key string in that language, extract all the results that he recovers, and then send it to you for analysis and you can do the analysis. It essentially saves time and money for the client.

Shubham Tyagi – Again, in some of the cases of the databases, which we, generally, follow or use, do not have the capability of running the search strategies in full text for some of the jurisdiction. In that case, if we restrict or perform our search strategies in full text, those patents will not be captured which might be relevant. So, those patents will be extracted by running the search strategies by native language expert.

Tanmay Mittal – To all our listeners, we are going to have a webinar focused on this topic. This webinar will be focused on How to Search Non-English Patent Literature Comprehensively. We would have Asian language expert Mr. Will Sweetman coming with us. He has an expertise in Chinese, Japanese, and Korean languages. We’ll get to know a lot more in that webinar. Please keep following us on LinkedIn, and you will get the notification.

How often can you see different drawings in different patent family members in a mechanical prior-art?

How often can you see different drawings or embodiments in different patent family members in a mechanical prior-art including US continuations or different patent authorities?

If a patent is filed in three countries so while analysing all the three family members, you see different embodiments or different drawings. How often do you see that? How often do you come across these situations wherein different family members have different embodiments and different drawings?

Shubham Tyagi – Very rarely, it comes once in five hundred documents or one thousand documents that the family members comprises different embodiments

Tanmay Mittal – Well, that isn’t rare, because we have millions of patents. We have over three million patents filed globally in a financial year. If you get it in every 500 patents, then that is something that should be considered. Nonetheless, you answered well. We have another question.

Calibration Document

How do you differ your search from other vendors? According to you, what are the unique selling points?

I think this is more of a sales question for us and we can get back to you. If this is being asked, then let us answer this. The important thing that I would want to highlight over here is about the Calibration Document, and yes I said it and we have a question about it. Please hold on to your question, and it will be getting answered through the next question that I am going to ask Shubham.

Shubham, the question for you is: what type of information, as you mentioned, you have used in the Calibration Document so I think these two questions can be answered in one go, so please go ahead.

Shubham Tyagi – In the Calibration document, we generally share with the client is in the form of a document of understanding, in which we share our understanding write-up along with the key features, which, as per our analysis, seem to be important on the same parameters as we have discussed in the presentation. That is VED. Along with that, there are certain other fields, which we share with the client, that are the search focus, our analysis focus and relevancy criteria. As our understanding, we will be reporting the final finding on the basis of those relevance criteria that we have reported in the Calibration Document.

Apart from this, in some of the instances, we also share our preliminary research strategies, which comprise a our preliminary Term Sets, Keywords and Classification along with the search combination of those Term Sets and Classification in a dedicated search strategy section.

Tanmay Mittal – I understand you mean to say that the Calibration Document is a snapshot of what all are you going to do in the search. It would be confirming the understanding with the inventor and the formation of key features so that you can stress on VED analysis as you mentioned. The inventor can identify which ones are the vital ones, which are the essential ones, and then what classes and keywords you are going to use. Correct me if I’m wrong.

Shubham Tyagi – Yes, in case, there are some technical words which we might have missed in our keyword section, it can be informed by the client or inventor and we can just add on in that section, and then finally move ahead in the right direction of searching.

How do you differ your search from other vendors? According to you, what are the unique selling points?

Tanmay Mittal – Thank you for answering that Shubham, and I believe the second question that was regarding – what is our USP?

I think one of the USPs is that we always calibrate ourselves with the client expectation. We take an extra step of sending a calibration document which has a snapshot of what all we are going to do in the search. It’s like a stitch in time saves nine. You can always ask us in advance to change any methodology or to change the ranking of the key features, or to stress on some important aspects, or to capture more important technical keywords or classifications. That is one of the things.

Do You Think Image Based Searching is Helpful in Mechanical Searches?

We have another interesting question for you, Shubham. This question is: have you ever tried to use image based search during mechanical searches? Or do you think it is helpful only in design searching?

The question is: Do you think that image based searching is helpful while searching utility patents in mechanical searches or do you think it is only helpful in design patent searching? What is your opinion to them?

Shubham Tyagi – Yes, definitely, an image based search helps us in carrying out the search related to utility patents also.

For example, if the utility search is related to a customizable table, so we can visualize all the components of that customized chair or table. While analysing the results, we have an image of that final product and the functioning of that work product. We can further look into the images that we were analysing, that what are the images or structure similar to that particular embodiment shared by the inventor. After that, if certain embodiments seems to be similar, then we go through the further description section of that particular patent in order to ensure that these particular elements which we are showing in one of the embodiment, the closed position of the table and in the under another embodiment, we are seeing that the image showing a telescopic structure of the leg portion of chair section, which is also a vital key feature of our inventor, so this particular element can be filtered out just by visualizing the images of those patents.

In the final stage while mapping these results, we will go through these patents in depth from the full description and specification of the patent so that we might not just assume by saying that this particular element might be telescopic. These are points cross-checked during the mapping stage before reporting to the client.

Tanmay Mittal – If I understand correctly, you trying to say that definitely image based search is helpful in both utility patent search as well as design patent search. However, in utility patent search, it’s just an add-on to the existing search strategies that we discussed.

To improve the relevancy and to reduce the screening time in some cases where the invention is purely structural or can be screened based on images, right? Subjective Call.

Difference between Prior-Art and Novelty of the Invention

We have one more question for you, Shubham. There are a lot of questions. We have a great audience today. How do you differentiate between a prior-art and novelty of the invention? I think the question is: how can you differentiate between a prior-art and novelty of the invention?

I believe the requester wants to understand how do you internally understand the difference between the prior-art embodiment and the novelty? I hope I am correct. Shubham, what is your opinion?

Shubham Tyagi – This particular aspect has been clearly identified if the inventor shares an IDF as there are various fields which clearly ask pinpointed questions from the inventor – which clearly specify what the novel aspects are and what are the prior-arts related to this particular invention?

If that particular IDF is not shared by the client or inventor, we can arrange a call on which we can ask those questions so that we can have a better understanding about the niche area of that invention or there is another best practice that we can go through the related closer prior-arts of that technical domain.

80% of the inventions is already known in the closer prior-arts that we identify in our narrow initial searches so that we can figure out these are the 20% or 2 or 3 key features which seems to be novel on which we need to emphasize more efforts while doing or conducting searches. Further, we will ensure that these are the most essential key features by calibrating it with the client by sharing the calibration document.

Tanmay Mittal – I think we have one last question. Just give me a moment to read it aloud. So we just had a thank you message saying that the presentation was very well taken, and it was quite descriptive. I think with that we can end this webinar and I want to say that this has been a wonderful session. I’m sure our listeners have had great takeaways from this session and will be able to use several of these pointers while working on doing prior-art searches on their own. We have tried to answer all the questions to the best of our knowledge, and we have scope for one last question.

While in novelty searching for mechanical patents with means plus function claiming in mechanical patents, how do you identify equivalence if any?

The question is: While in novelty searching for mechanical patents with means plus function claiming in mechanical patents, how do you identify equivalence if any? I would like to repeat this question. While doing a novelty search on mechanical patents with means plus function games, how do you identify equivalence if any? Any quick thoughts on this question, Shubham?

Shubham Tyagi – If the invention is more related to the functional aspect, I believe there might be some functional key features also there.

Tanmay Mittal – The question is regarding means plus function claims. If you are doing a prior-art search or a novelty search for a mechanical patent with means plus function claims, how do you identify equivalence if there any?

Shubham Tyagi – If the client or inventor has disclosed that these are the particular elements which have a specific or niche additional important aspect in the overall system by having a specific functional aspect, then that particular functional aspect can be included in the claim key feature we find novel after analysis. If the invention comprises of a functional aspects, there might be possibilities that these aspects can be included in the claim section.

Tanmay Mittal – I think we were able to answer the question. If we can get a confirmation from our requester, we can go ahead then.

Thank you for that answer, and with that, this brings me to the end of the webinar. In case, we have any further questions. We can take one last one.

I would like to now thank everyone for being such an interactive and participative audience today and thank you, Shubham, for the insightful session. In case, we were not able to answer any question, or in case you would like to get this presentation or know more about this, you can drop us an e-mail and we will be happy to revert.

As I already mentioned, Sagacious IP is running an array of webinars in the same context. Researchers and Practitioners can understand the best practices to perform comprehensive searches on their own. The first one is How to do a non-English patent literature search comprehensively including Chinese, Japanese, and Korean patents. We have our Chinese expert Mr. Will Sweetman joining us for this and showing some best practices. Another one is Top Tips about How to search your Design Patents. I request everyone to please go ahead and register for them if any of them is interesting.

I want to extend a big thank you to all our listeners who helped us start on time and helped us finish on time as well. We really appreciate it, and we thank you for coming and joining us today.

Thank you everyone. Have a pleasant day ahead. Stay safe and take care.

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