Nolo's Patents for Beginners by Pressman & Stim - 5th Edition

In the book by Pressman & Stim entitled "Nolo's Patents for Beginners" 5th Edition (May 2006), in the section entitled "Hiring a Patent Searcher", the authors have listed six reasons why patent searches are never perfect:

1: cannot search all pending applications since only those at least 18 months old are published (and then not all of those either)
2: hard copies of patent documents can be missing (geez, I guess that's true if you don't use a computer!)
3: the searched areas may not contain foreign, non-patent or exotic patent documents (well, if you only search US documents, you won't find any foreign ones, duh!; also, if you manually search the foreign art shoes in the USPTO, they do not normally contain complete sets of foreign patents/non-patent documents either, they never did, and, now, they never will)
4: very recently issued patents have not yet been placed in the files (earth to Nolo: the US patent "files" no longer exist!, so is this what you are teaching "beginners" about patent searching?, mentioning the "patent files"; why not explain the updatedness of the patent DATABASES?)
5: patents may not be properly classified (geez, finally; now we might be getting somewhere; maybe we can explore this serious systemic problem, which is true for the ENTIRE patent database?!)
6: an invention may have been used publicly (well, yes, that's true, but who ever requests a "patent search" to cover publicly displayed concepts/"inventions"?; in the same vein, why not also include whether the "invention" is a "perpetual motion machine" or is contrary to laws, morality, etc.?; and why ask for such a "patent search" anyway?)

now, what about the possibility that the patent searcher is simply not familiar with the technology and takes into consideration the wrong search areas or looks for the wrong features/elements in their search results? - and what about when the searcher is too short on time to look at the proper portions of the patent documents in their search results to determine relevancy? - and what about if the requester mischaracterizes the search request (maybe because the search requester failed to provide key information)? - shouldn't these events be included in the list provided by these authors leading to a less-than-perfect search?

Furthermore, this book, at the top of page 65, states that licensed patent searchers, called "patent agents", "often dig deeper than might at first appear necessary". What the heck does that mean? - based on what evidence? - and what does "deeper" mean, or "might at first appear necessary"?, i.e., compared to what? Are we to assume that simply because someone is an agent, that they will necessarily dig deeper in any given patent search? I think not.

Perhaps the authors mean that "deeper" means following the various threads that a patent document provides, such as classifications, inventor names, company names, related documents, etc.? - but this book does not appear to define the term "deeper" - yet this is supposed to be a book for "beginners" - thanks a lot, attorneys Pressman and Stim for your help and guidance!

I think that choosing a patent searcher involves a lot more that simply knowing whether that person is an "agent" or not, and I am not quite sure whether being an "agent" really means that that person will dig any "deeper" than anyone else - I have not seen any data proving it - and how would the population sample to build such evidence be selected? - also, I know that patent searching questions and issues are not part of the examination that the patent agent is required to take; certainly there is nothing in the exam that proves the searching skills of the test-taker.

Perhaps Nolo and its authors should try to back up their claims with statistics rather than confuse helpless beginners in this already complex field.

Francis "Fran" Lorin
siberkhem.com