On Google's "Prior Art Finder" and "sanity check" prior art searches
Dennis Crouch, associate professor of law at the University of Missouri School of Law and the author of the law blog Patently-O, notes on his blog that every technique used for identifying prior art has shortcomings. "The proper question for Google's tools is whether the new system has a role in the patenting process," he says. "At minimum, it is likely an improvement on the quick pre-filing 'sanity check' searches that are often conducted by patent applicants and patent attorneys."
However, Patrick Anderson, president of IP research service Patent Calls and author of the blog Gametime IP, proposes a different name for Google's Prior Art Finder: "Infringement Finder." He argues that finding patents issued later than the source patent, rather than earlier, can help identify potential infringement.
"By speeding up access to information that may lead to evidence of infringement, Google puts more power back into the hands of inventors and patent owners," he writes, noting that Google has invested significantly in patents through acquisitions like Motorola Mobility.
In context, the post at Patently-O had stated:
Google has implemented a new prior art search button that attempts to identify the ten most relevant prior art documents in its search database. In my 10–minute test, the identified prior art did not appear to be directly on-point. Of course, my criticism likely suffers from the Nirvana fallacy. Every prior art search methodology suffers from major deficiencies. The proper question for Google's tools is whether the new system has a role in the patenting process. At minimum, it is likely an improvement on the quick pre-filing “sanity check” searches that are often conducted by patent applicants and patent attorneys. In its press release, Google indicated that the company will “be refining and extending the Prior Art Finder as [it] develop[s] a better understanding of how to analyze patent claims and how to integrate the results into the workflow of patent searchers.”
IPBiz notes that a fairly thorough prior art search (available in places like India for less than $1000) is more cost effective than spending the filing fees and attorney costs associated with a nonprovisional application that is blown out of the water by prior art in a first Office Action, simply because only a "sanity check" search was done.
Separately, as one comment on --He argues that finding patents issued later than the source patent, rather than earlier, can help identify potential infringement. --, a later patent with claims falling within the scope of claims of an earlier patent may be a subservient or dominated patent, but patent claims themselves don't infringe anything. Practicing such claims in the US would infringe.
See also Google’s “Prior Art Finder” — What it is and what it isn’t :
Google’s Prior Art Finder tool is accessible from any individual patent document within Google Patents’ system.
Prior Art Finder pros
1. Query generation is automatic – Starting a query with the Prior Art Finder couldn’t be easier. Users need only to click the blue “Find prior art” button at the top of any individual patent document within Google Patents. From there, search terms are automatically mined and generated from the full available text of the document. Accompanying the term generation is an automatic end date for search results that coincides with the extracted filing date from the patent document (putting the “prior” in prior art).