How to get the most out of a paid prior art search?

[Hugh]

Hi Ric,

I'm shooting in the dark here a bit. I've used lawyers for lots of things, but never for a prior art searches. My experience with them as a professional group, has been that the better informed you are the better the result you ultimately get (no free lunches).

Do you have a strategy / format / template that you use to get the most from prior art searches? Do you set the scope of the search, define search terms, anything like that? Do just pass them the provisional and rely on the skill of the firm doing the work?

I'm thinking more in terms of more complex patent spaces like software, where there could be many thousands of similar patents, diverse phrasing / terminology. I've spent hours searching myself, and I find it hard to understand how anyone can make a reasonably certain judgement.. the volume of information makes it very difficult.

I'm worried if I set the scope, I may miss something important, and if I don't set the scope I'm going to get back some generalist dribble that isn't useful. Any pointers you can offer to get the most from the search process would be great. 

Thanks for your time,

Hugh

[Ric Richardson]

There is no such thing as setting a scope... you give them your patent and they compare to everything out there.. its a simple as that... the value of the provisional is that it can be used as the base for them to do a preemptive search then when you do the final application you can file with confidence.

Its all about the reputation of the person doing the prior art search, you want someone who has hopefully been contensted and who has some experience in the field of the invention... ie an attorney with a chemical background and a contested search (ie has been questioned and found to be solid) in the field of a chemical or pharma invention.