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

1. “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

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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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