Authors: David Hunt (Editor), Long Nguyen (Editor), Matthew Rodgers
ISBN-13: 9780471783794, ISBN-10: 047178379X
Format: Hardcover
Publisher: Wiley, John & Sons, Incorporated
Date Published: February 2007
Edition: (Non-applicable)
David Hunt is the CEO and owner of Landon IP, Inc. He holds a BA and an MBA from the College of William & Mary and has worked as a senior manager in corporate strategy, market research, and competitive intelligence at the Federal Home Loan Mortgage Corporation (Freddie Mac) in McLean, Virginia. Mr. Hunt has served as a project manager at large and small companies in the information technology areas. He has considerable experience in operations management. Mr. Hunt is a member of PIUG and PATMG, which are the professional patent information users groups in the United States and England. He is a member of the International Trademark Association (INTA) as well as the Society for Competitive Intelligence Professionals (SCIP).
Long B. Nguyen is the director of patent search quality for Landon IP, Inc. He holds an MS in engineering management from George Washington University, and a BS in mechanical engineering and a BA in economics from Syracuse University. Mr. Nguyen is a registered patent agent (No. 56,138) with several years of experience in patent prosecution at the United States Patent and Trademark Office (USPTO). While at the USPTO as a patent examiner, he examined technologies that included traction devices, wheels and axles, and tire inflation systems. Mr. Nguyen also has experience in business methods.
Matthew Rodgers is the vice president of the Patent Search Group for Landon IP, Inc. He holds a BS in mechanical engineering from the University of Texas at Austin. Mr. Rodgers has conducted research in semiconductor heat treatment and selective laser sintering. Additionally, he possesses significant experience in the analysis of metallurgical failure. Prior to joining Landon IP, Mr. Rodgers worked for several years as a patent examiner at the USPTO and as a technical specialist who conducted patent searches at other commercial patent search firms. He is a regular faculty member of the leading patent law training company, Patent Resources Group, Inc., of Charlottesville, Virginia.
Book Synopsis
Patent searches before prosecution help improve the defensibility of the future patent, and can dissuade the inventor from prosecuting at all. In our litigious society, the pre-examination preparation by an inventor, patent attorney, agent, or searcher can save the patent owner much time and money later on. But while quality patent searching is vital to intellectual property law, there are very few resources available on how an intellectual property professional should conduct a patent search. Patent Searching: Tools & Techniques provides a practical guide to the art and science of this task, along with essential information on patent law, patent search theory, and practice.
Editor David Hunt and his team of contributors at Landon IP, Inc.one of the largest privately held patent search, analysis, and consulting firms in the United Stateshave drawn on their experience working for approximately 2,000 companies and 1,000 IP law firms to create an indispensable reference to patent searching procedures and techniques. They detail key principles and approaches that will work regardless of the specific tools you use, covering everything from the basic types of patent searches (including patentability, validity, infringement, clearance, state-of-the-art, and patent landscape) to the mechanics of searching, patent analysis, reporting search results, and more.
While the Internet has made simple searching easy, the volume of information available has in many ways made it less focused and harder to interpret findings. Patent Searching: Tools & Techniques helps professionals avoid information overload and identify just the information they need. It outlines criteria on how to select the most appropriate search tools and even provide current information on the major databases available. And with an abundance of illustrative tables, charts, and figures, this book makes complex material easy to read and understand.
Whether you're a patent examiner, patent attorney, commercial patent searcher, patent liaison, IP librarian, law professor, or competitive intelligence analyst, you'll find Patent Searching: Tools & Techniques to be just the guide you have been waiting for, with a range of approaches to patent searching that will be useful to you regardless of your technical expertise or role in the intellectual property community.
Table of Contents
About the Editors ix
About Landon IP, Inc. xi
Acknowledgments xiii
Preface xvii
Patent Law and Examination as Context for Patent Searching 1
The U.S. Patent System 2
The Benefits of Patent Protection 3
Harmonization of Patent Laws 4
The Paris Convention 4
The Patent Cooperation Treaty 5
Trade-Related Intellectual Property Rights (TRIPS) 5
American Inventors Protection Act of 1999 (AIPA) 5
The Priority Date 6
The U.S. Provisional Application 6
Continuing Applications 6
Nonprovisional Applications 6
Sections of a Patent 7
A Note about Reading the Specification and the Claims 8
Sections of a Patent File History 8
Look before You Leap: Considerations before Filing 10
Patent Examination Process 11
The Job of the Patent Examiner 12
The Examiner Follows the Courts 12
The Examiner Follows Patent Examining Procedure 12
Administrative Handling of the Patent Application 12
Actual Patent Examination 13
The Examiner Reviews Cited Patents and Nonpatent Publications 15
The Examiner Conducts an Inventor Search ("Double Patenting" Search) 16
The Examiner Applies the References 17
After Patent Grant 17
Backlog of Patent Applications 18
Types of Patent Searches 21
Patentability 21
What Is a Patentability Search? 21
When Is a Patentability Search Needed? 22
What Needs to Be Searched in a Patentability Search? 23
What the Searcher Needs to Know to Search Successfully 23
Validity 24
What Is a Validity Search? 24
When Is a Validity Search Needed? 24
What Needs to Be Searched in a Validity Search? 25
Infringement 26
What Is an Infringement Search? 26
When Is an Infringement Search Needed? 27
What Needs to Be Searched in an Infringement Search? 27
Clearance 28
What Is a Clearance Search? 28
When Is a Clearance Search Needed? 28
What Needs to Be Searched in a Clearance Search? 29
State of the Art 30
What Is a State-of-the-Art Search? 30
When Is a State-of-the-Art Search Needed? 30
What Needs to Be Searched in a State-of-The-Art Search? 30
Patent Landscape 31
What is a Patent Landscape Search? 31
Benefits of Prior Art Searching 31
The Mechanics of Searching 35
Introduction 35
Properly Scoping the Search 37
Identifying Subject Features: Problem-Solution Approach 37
Generating Keywords 39
Selecting Classification Areas 41
U.S. Patent Classification (USPC) System 41
USPC Index (www.uspto.gov/web/patents/classification/uspcindex/indextouspc.htm) 42
USPC Keyword Search (www.uspto.gov/web/patents/classification/) 42
Reviewing Closely Related Patents 43
Finding Subclasses with the Help of a Patent Examiner 45
IPC (International Patent Classification) 46
ECLA (European Patent Office Classification) 47
FI/F-Term 47
Preparing Initial Text Queries 47
Conducting the Search 51
Evaluating Patent Documents 52
The Sections of a Patent and Their Usefulness in Patent Searching 52
Titles 52
Abstracts 52
Descriptions of the Invention 53
Claims 53
Drawings 53
Determining Relevancy According to the Invention Subject Features 53
Evaluating Patent Documents in Different Search Types 60
Patentability and Validity as Applied to 35 United States Code (USC) [section] 102 and 103 60
Identifying the Subject Features for a Patentability Search 60
Identifying the Subject Features for a Validity Search 60
Identifying the Subject Features for an Infringement Search 62
Identifying the Subject Features for a Clearance or Freedom to Operate Search 62
Classification Searching 63
Core Classification Searching 64
Peripheral Classification Searching 66
Discrepancies in the U.S. Patent Classification System 67
Full- Text Searching 68
Citation Searching 72
Backward Citation Searching 73
Forward Citation Searching 73
Searching Foreign Patent Documents 74
Paris Convention for the Protection of International Property 75
The European Patent Organization 76
World Intellectual Property Organization (WIPO) 77
Patent Cooperation Treaty (PCT) 77
National Authorities 78
Searching Full-Text Major Foreign Patent Documents 79
Keywords in Foreign Languages and Simple Translations 79
Using Machine Translators to Assess Foreign Art 80
Searching Abstract-Only Databases 81
Value-Added Tools 82
Derwent World Patent Index (DWPI) 82
Searching Nonpatent Literature (NPL) 82
Issues Peculiar to Certain Technical Disciplines 84
Biotechnology 84
Biosis 87
Biotechabs/Biotechds 87
Chemical Abstracts 88
Cab Abstracts 88
Chemical 88
Business Methods 90
Computer, Software, and Electronics 92
Mechanical Engineering 105
Estimating Search Time 106
Patent Analysis 109
The Precursor to Patent Analysis 109
Searches versus Analyses: What's the Difference? 110
Features of Patent Analyses and Reporting 112
Establish Clear Objectives 112
The Importance of the Data 112
The Trouble with Shortcuts 113
Capturing the Data Set 114
Processing the Results 115
Displaying Results 116
Sample Patent Analysis Report 117
Approaches to Reporting Search Results 127
Purpose of the Search Report 128
Anatomy of a Search Report 129
Writing a Summary 129
Presenting the Subject Matter 130
Discussing References 132
Writing Discussions 134
Example: Hamster Health Spa 135
Indicating Claims 136
Prioritizing References 137
Central References 138
Peripheral References 139
Central and Peripheral References 140
Search History 141
Classification Areas 142
Databases Accessed 143
Examiners Contacted 143
Conclusion 143
Search Tools 145
The Availability of Patent Information 145
Criteria for Selecting Search Tools 146
Data Coverage 147
Document Delivery 147
Import and Export Functions 148
Pricing 148
Usability 149
Company Strength 149
When to Select a Search Tool 150
Breadth and Depth of Data Coverage 151
Data Sources for Chemical Searches 151
Data Sources for Mechanical Searches 154
Data Sources For Electrical/Computer Searches 156
Patent Data Sources for Electrical and Computer Searches 156
NPL Sources for Electrical Searches 156
Data Sources for Business Methods Searches 157
Methods of Access 159
Text Search Syntax 159
Discussion of Specific Search Tools 160
USPTO Search Room 160
U.S. Patent and Trademark Depository Libraries (PTDL) 161
Micropatent Patent Web 161
Examiner Assisted Search Tool (EAST) 164
Thomson Delphion 166
Questel-Orbit 167
PatAnalyst 167
Minesoft PatBase 169
Access to Nonpatent Literature 170
The Internet 173
The Internet Needs a Skilled Searcher 175
Meta-Search Engines 175
DialogWeb 175
IP.com 176
IEEE Xplore 176
NCBI 177
Searching Journals 177
Conference Proceedings 178
Newspapers, Magazines, and Catalogues 179
Value-Added Capabilities of Search Tools 179
Alerting 179
Search History 179
Information and Image Importing and Exporting 180
Legal Status, Maintenance Fees, and Prosecution 181
Costs 181
Visualization 181
Conclusion 182
Index 183
Subjects