To those who are related to R&D or patent practicing, search has important meaning. By the help of effective search:
Susan Ardis, An Introduction to U.S. Patent Searching- The Process, Libraries Unlimited, Inc. (1991):
Bibliographic Searches
This type of search is the easiest and the quickest because the searcher already has a patent number or an inventor's name. The point of this type of search is to find out what was covered by a specific patent number or to find out what patents a particular inventor has to his or her credit. Bibliographic searches can be done as a part of historical, biographical, archaeological, or product research.
Patentability Searches
Patentability searches are probably the most common type. This attempts to determine whether a specific invention is (1) within the scope of patentable subject matter, (2) useful, (3) novel, and (4)unobvious. While patentability searches can be performed early in the development of an invention, they are more commonly done prior to submitting a patent application. The purpose of this type of search is to determine whether there are any previous patents(prior art) that might prevent the searcher from patenting his or her idea. Another benefit is that the searcher can be spared the expense of filing an application, since the filing fee is not refunded if the application is rejected. A search may also turn up prior art that might be useful in preparing the application.
State-of-the-Art Searches
Any search designed to give an overview of prior art(technology) in a specific area is called a state-of-the-art search. This is basically an information gathering approach and can be as extensive or cursory as needed. This type of search is done to solve a specific problem, find technology to license, determine what the competition is up to, and for other similar purposes. For example, a manufacturer might conduct a state-of-the-art search to determine what has previously been done, to determine if an area has been overlooked, or to determine if it had had a lot of patenting activity. This type of search is very common.
Continuing Searches
A continuing search is nothing more than a current awareness search of recently issued patents. Generally these searches are of two types: keeping up with patent activity in areas of interest and keeping up with competitor's activities. This can be done online or by scanning the Official Gazette weekly under subclasses of interest. It is very common for companies to scan the OG in just this way.
Assignment Searches
When a patent is assigned to another person or company it is the same as a sale, even though the terminology is just a bit different. For example, the buyer, whether a company or individual, is called the"assignee" and the seller(often the inventor) is called the "assignor." Assignment records of issued patents are public. However, licenses are not recorded in the Patent and Trademark Office. The purpose of this type of search is to determine legal ownership of a patent.
Infringement Searches
An infringement search is used to determine if proposed activity might infringe on or be covered by unexpired patens. This type of search is concerned only with the claims of unexpired patents. As a legal issue that can be adjudicated in the courts, infringement would be pursued by a patent attorney. Only the Patent and Trademark Office in Washington has the complete record of all office actions as they relate to an individual patent. This complete record is referred to as the file wrapper; it contains copies of correspondence between the office and the inventor, information on classification developed during examination, index of the claims, field of search, and search notes. These search notes can be extremely useful since they can contain references not printed resulting patent, including notes of any consultations with other examiners and results of library and literature searches. This information completes the application file and records areas or documents considered by the examiner. For these reasons infringement searches are rarely done in a patent depository library.
Validity Searches
Validity searches are generally undertaken by companies or individuals trying to determine if is possible to invalidate another's patent. The searcher is looking for issued patents or printed publications that anticipate or make obvious another issued patent. The searcher could also be looking for earlier public knowledge on user of the invention, technical errors, fraud, or anything that would cause the patent to be declared invalid. As a result, a validity search is done to determine if an unexpired patent is valid and enforceable. This type of searching is generally done by patent attorneys.
Right-to-Make Searches
A right-to-make search concentrates on expired patents, unlike an infringement search, which concentrates on unexpired patents. These searches are done to determine if another company's process, product, or design has expired and can then be copied with impunity.
Before beginning any patent or patent-related search, it is always a
good idea to decide what type of search will produce the best results for
the particular problem at hand. The particular problem, money, time may
be the decision-making factors. This paper, among many searches briefly
explained above, describes only novelty search in very detail in terms
of (1)type of information sources to consult, (2)the scope of the search,
(3)the time frame of the search, (4)pros and cons of conducting the search
in house, and if completed in house, (5)whom is/are the indicated searchers.
II. Information Sources
(Return to top of page)
Section 102 of the Patent Act, 35 U.S.C. 102 (1994) defines novelty criteria as following:
1. Inventor
If you, as a searcher, can have help from the inventor of the invention,
the inventor can be the best source of prior arts. Obviously his knowledge
or collections of prior arts made him take the first step to the invention.
Unfortunately, the reliability of this source(inventor) much depends on
the inventor's quality. Sometimes the source is not an inventor but just
a pirate. Nonetheless, a searcher must keep in mind to, if possible, find
out some prior arts from the inventor.
2. USPTO Shoe Boxes
If you can go to the USPTO, search room in the office can be a good
source of prior arts. It is one of the cheapest and broadest source
of prior arts, excluding the fare from your location to the office.
3. Patent & Trademark Depository Library(PTDL)
The research tools, both electronic and print, to conduct a novelty patent search are available at "Patent and Trademark Depository Library". PTDL is a library which is designated by the USPTO to receive and house copies of U.S. patents and trademark materials, to make them freely available to the public and to actively disseminate both patent and trademark information. Now there are 80 PTDLs in 49 states and Puerto Rico. The Library has utility patents on microfilm from 1970 to date and design patents on microfilm from 1983 to date. Also available are plant patents, which include color photographs, from 1931 to date. The Library also has the Gazette from 1872 to date.
Reference librarians are available to assist with the use of the tools
to start a patent search, but the staff cannot do a patent search or give
legal advice.
4. Examiner
Examiners are full-time professional searchers who are, unlike other
private searchers, searching the specific narrow field of the invention.
To take advantage of examiners, you can either file a patent application
and wait until an examiner will find many valuable prior arts or request
interview to an examiner who is most closely related to your technology.
Remember to take advantage of more than 2,000 examiners who are paid by
your tax.
5. On-line Database (modified from International/Foreign/Comparative Intellectual Property Electronic Resource by Chih-Yang Lin, to see the original, refer to the web site http://www.piercelaw.edu/ipmall/ipcorner/evals97/compip.htm)
Selection of online databases is done under some criteria:
1. Subject Coverage
2. Content
3. Language
4. Geographic Coverage.
Only databases expressed in English are chosen herein. The following are the list of selected databases:
A. International Patent
1. APIPAT
Type: Bibliographic
Content: Contains more than 230,000 citations, with abstracts (from 1980), to patents related to the petroleum refining and petrochemical industries issued in all industrial countries, as well as European patents issued under the European Patent Procedure (December 1978), and world patents issued under the patent Cooperation Treaty. Beginning in January 1981, also covers patents related to oil field chemicals.
Subject Coverage: Petroleum and energy industries worldwide, including chemistry, engineering, and economics relevant to the refining of crude oils to make fuels, lubricants, and other products; transportation and storage of petroleum products; environmental matters bearing on petroleum; processes and material that could replace conventional petroleum products; petrochemicals; chemicals used in the oilfields in drilling, producing, stimulating, and enhanced recovery.
Time Span: 1964 to date.
Updating: 825 records a month.
Online Availability: DIALOG Information Services, Inc.
2. BNA Daily News from Washington
Type: Full-text.
Content: Contains the complete text of 24 BNA electronic-only publications that provide coverage of news of news on national and international government and private sector activities. The file contains the following publications, many of which are described in a separate entry: BNA Antitrust & Trade Regulation Daily (ATD); BNA Banking Daily (BBD); BNA Bankruptcy Law Daily (BLD); BNA California Environment Daily (CED); BNA Chemical Regulation Daily (CRD); BNA corporate Counsel Daily (CCD); BNA Employment Policy & Law Daily; BNA Federal Contracts Daily (FCD); BNA Health Care Daily (HCD); BNA International Business and Finance Daily (IBF); BNA International Environment Daily (IED); BNA International Trade Daily (ITD); BNA Labor Daily (BLD); BNA Management Briefing (MBD); BNA National Environment Daily; BNA Occupational Safety & Health Daily (OSD); BNA Patent, Trademark & Copyright Daily (PTD); BNA Pensions & Benefits Daily (PBD); BNA Product Liability Daily (PLD); BNA Securities Law Daily (SLD); BNA State Environment Daily (SED); BNA Tax Updates (BTU); BNA Toxics Law Daily (TLD); and BNA Washington Insider (BWI).
Subject Coverage: U.S. governmental and regulatory developments policymaking, legislative activities, and legal issues in the following areas:
accounting, antitrust, banking, bankruptcy, benefits, chemical regulation,
commodities, competition, congressional floor action, congressional hearings,
copyrights, environment, ergonomics, ERISA, fair employment practices,
federal contracts, Federal Register contents foreign investment, government
actions government procurement chemistry , hazardous materials, import
restrictions, intellectual property, international trade, labor management,
legal developments, occupational safety, patents, pensions, pollution control,
product liability, recycling, right-to-know, securities, solid waste, superfund,
Supreme Court actions, tax, toxics litigation, trade regulation, trademarks,
and activities.
Time Span: Varies by file.
Updating: Daily.
Online Availability: DIALOG Information Services, Inc.
3. BNA's Patent, Trademark & Copyright Journal
Type: Full-text.
Content: contains the complete text pf BNA's Patent, Trademark & Copyright Journal, covering legislation, committee reports, International developments (e.g., treaties, conventions), and court and federal agency rulings on patents, trademarks, copyright, and unfair competition. Primary source of information is the U.S. Patent and Trademark Office.
Subject Coverage: Patent, trademark, and copyright law.
Time Span: 1982 to date, LEXIS; 1986 to date, WEST LAW.
Updating: Weekly.
Online Availability: LEXIS (PTCJNL: Transaction pricing, per-search
pricing, and connect hour charging options available; contact vendor for
details).
4. British Library Catalogue; Science Reference and Information Service
Type: Bibliographic.
Content: Contains approximately 290,000 citations to books, periodicals, monographs, conference proceedings, and directories held by the British Library Science Reference and Information Service. Covers scientific and technical literature, literature on patents, trademarks, and registered designs, and some business publications. Includes title, brief notes (e.g., name of sponsoring body for conference proceedings, date of meeting), physical description (e.g., number of pages), publisher and/or distributor, and SRIS classification.
Subject Coverage: International.
Time Span: 1974 to date, with some earlier materials.
Updating: Weekly.
Online Availability: BLAISE-LINE.
5. CAS Registry File
Type: Numeric; full-text.
Content: Contains structure, name, and formula information for nearly 13 million substances identified by Chemical Abstracts Service in journals and patents Covers more than 16,000,000 substance names. Typical data elements include CAS Registry Number locator, and stereo chemistry. Enables the user to retrieve full information on a particular substance covered in the various Chemical Abstracts Service databases. Data are derived from more than 12,000 journals, patents from 27 countries and two international organizations; and books, conference proceedings, dissertations, and technical reports.
Subject Coverage: Substance information and identification, including organic compounds, coordination compounds, polymers, alloys, mixtures, and minerals.
Time Span: 1957 to date.
Updating: Weekly, with 8000 to 14,000 new records.
Online Availability: Data-Star
6. Current Patens Fast-Alert
Type: Bibliographic.
Content: Contains citations, with abstracts, to U.S., British, European, and international pharmaceutical patents and applications. Covers anti-inflammatory, antiallerge and gastrointestinal patents; antimicrobial patents, including antivirals, vaccines antifungals, antibacterials, and antiparasitics; cardiovascular patents, including cardovascular chemotherapy and blood products; and central nervous system (CNS) patents, including antidepressants, antipsychotics, analgesics, antiepilerics, antimigraines, and treatments for Alzheimer's Disease, Parkinson's Disease and stroke. Abstracts include therapeutic classification and examples of preferred compounds, inventor name, and International Patent Classification (IPC).
Subject Coverage: Phamaceutical patents.
Time Span: July 1989 to date.
Updating: Weekly, within 10 days of patent publication.
Online Availability: Data-Star.
7. ECLATX
Type: Directory.
Content: contains all codes, with explanations, that comprise the European patent Office (EPO) classification scheme. This hierarchical scheme is represented by two types of records in the database. Each classification heading record covers a subclass, providing subclass code and title, class code and title, and explanatory notes., Each classification text record covers a first-level subgroup, providing the main group code and title, one subgroup, and all subdivisions of that subgroup. Approximately 100,000 subdivision codes correspond to the International Patent Classification (IPC); another 40,000 codes were added by the EPO. Classification codes can be used as search terms in EDOC (described in a separate entry).
Subject Coverage: the International Patent classification scheme.
Time Span: Current information.
Updating: Monthly.
Online Availability: QUESTEL ORBIT.
8. GENESEQ
Type: Bibliographic; full-text; numeric.
Content: Contains descriptions of nucleic acid and protein sequences from patent applications and granted patents. Covers all nucleotide sequences greater than 9 bases, all protein sequences greater than 3 amino acids, and probes of any length. Includes type of molecule (e.g., DNA, RNA, protein), length of molecule, accession number, description of the sequence, genus and species of the organism from which the sequence was obtained, table of sequence-specific features, patent number, publication date, priority details for the patent, patent assignee, patent inventors, patent title, and patent sequence. Nucleotide sequences are in IUPAC format, and protein sequences are in one-letter format. Data are derived from patent applications and granted patents published by 14 major patent issuing authorities, including the European Patent Office (EPO), Japan Patent Information Organization (JAPIO), and U.S. Patent and Trademark Office (USPTO).
Subject Coverage: Nucleic sequence data.
Time Span: Patents issued since 1989, with some earlier coverage.
Updating: Biweekly.
Online Availability: BIONET On-line Service.
9. Genetic Technology News (GTN) Union
Type: Directory; full-text.
Content: contains the complete text of Genetic Technology News, a monthly newsletter covering commercial applications in the chemical, energy, food, and pharmaceutical industries of products resulting from genetic engineering. Includes market forecasts, business news from leading biotechnology firms, announcements of investment opportunities, reports on research activities at universities and research institutions, and reports of new porducts. Also provides information on recently granted biotechnology patents, including number, title, assignee, and issue date. Many items include names, addresses, and telephone numbers of people who may be contacted for further information.
Subject Coverage: Molecular biology and genetic engineering.
Time Span: Mead Data Central, 1982 to April 1, 1993.
Updating: Not Updated.
10. IMSWorld Patents International
Type: Directory.
Content: Contains product patent information on more than 1000 pharmaceutical compounds, either marketed or in active research and development. Provides pharmaceutical product family profiles. For each patent, provides drug name, synonyms, trade names, therapeutic class, compound name, Chemical Abstracts Service (CAS) Registry Number, description, patent number, assignee, priority numbers and dates, publication date, patent country, estimated patent expiration dates, published application number by country, extensions to patent terms for the United States and japan where granted, and U.S. marketing exclusivity information, if applicable. Corresponds to Patents International.
Subject Coverage: Drug patents.
Time Span: 1987 to date.
Updating: Monthly.
Online Availability: ORBIT QUESTEL (DPIN).
11. INPADOC Data Base (IDB)
Type: Bibliographic.
Content: Contains citations to more than 20 million patent documents issued in 56 countries, accounting for 96 percent of the world's currently published patent documents. Includes published patents, inventors' certificates, utility certificates, and published applications. For each patent, provides country of publication, document type, document publication date, country of priority, number of application, priority date, International patent Classification (IPC) symbol, inventor name, owner name, applicant name, invention title, national classification symbol, and legally related domestic patent application. Additionally provides legal status information for patents granted in Austria, Denmark, France, Hungary, Luxemburg, Monaco, Germany, the Netherlands, Spain, Switzerland, the United Kingdom, and the United States, and by the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO), under the Patent Cooperation Treaty of 1970. Each record contains standard bibliographic data. Includes patent family information.
NOTE: On ORBIT QUESTEL, new patent records are maintained additionally in the INPANEW file for 6 to 10 weeks. Information on patent legal status is available in the separate Legal Status file.
On STN, new patent records and legal status records are maintained additionally in the INPAMONITOR file for 4 weeks.
Subject Coverage: Patents issued worldwide, including patent families and legal status.
Time Span: 1968 to date.
Updating: weekly.
Online Availability: DIALOG Information Services, Inc.
12. MARPAT
Type: Image; bibliographic.
Content: Contains more than 250,000 graphic representations of generic (Markush) structures from more than 72,000 patents published since 1988 and cited in CA File (described in a separate entry). All chemical subject areas are represented, with the exception of alloys, metal oxides, inorganic salts, intermetallics, and polymers. Records also contain wazzu bibliographic citation, abstract, and CAS Registry Numbers.
Subject Coverage: Markush structures from patents.
Time Span: 1988 to date.
Updating: Biweekly.
Online Availability: STN International (MARPAT).
13. MARPATpreviews
Type: Image; properties; numeric; bibliographic.
Content: Contains more than 3500 graphic representations of generic (Markush) structures from more than 1000 patents cited in the Capreviews database (described in a separate entry). All chemical subject areas are represented, with the exception of alloys, metal oxides, inorganic salts, intermetallics, and polymers. Records also contain bibliographic citation, abstract, and CAS Registry Numbers.
Subject Coverage: Markush structures.
Time Span: Current information.
Updating: Daily.
Online Availability: STN International.
14. PAPERCHEM
Type: Bibliographic.
Content: contains more than 300,000 citations, most with abstracts, to the worldwide scientific and technical literature and patents on theories, resources, products, and processes of the pulp, paper, and board industries. Both manufacturing and use aspects are covered. Also provides author and inventor affiliation information, including organization name and location. Corresponds to the Abstract Bulletin of The Institute of Paper Science and Technology (ABIPST).
Subject Coverage: Scientific and technical aspects of the pulp and paper industries, including raw materials; principles; processes; patents; technology; machinery and equipment; products; packaging; graphic arts; forestry and silviculture; and the chemistry of carbohydrates, cellulose, hemicelluloses, lignin, and wood extractives.
Time Span: 1967 to date.
Updating: 1100 records a month.
Online Availability: DIALOG Information Services, Inc.
15. PATDATA
Type: Bibliographic.
Content: Contains citations, with abstracts, to approximately 700,000 U.S. utility patents issued since 1971 and all reissue patents and defense publications issued by the United States Patent and Trademark Office since 1975. Each record includes patent number, date, title, inventor, inventor address, patent assignee, application data, foreign priority information, and codes of the United States and International Patent Classification Systems. Also includes cited references to U.S. and non-U.S. patents.
Subject Coverage: U.S. patents in all fields of medicine, science, and engineering technology, including utility patents and reissue patents.
Time Span: 1975 to date.
Updating: Weekly.
Online Availability: CDP Online.
16. Patent Legal Status
Type: Directory.
Content: Contains more than seven million records on the legal status of patents and patent applications filed with Austrian, Belgian, Swiss, German, French, British, American and other patent authorities, the European Patent Office (EPO), or the World Intellectual Property Organization (WIPO). Covers withdrawals, cancellations, annulments, and changes occurring because of failure to pay annuities. Sources are patent office gazettes. Corresponds to the microfiche publication PRS.
Subject Coverage: Patents and patent applications filed with various patent authorities worldwide.
Time Span: 1959 to date.
Updating: Weekly. Online Availability: DIALOG Information Services,
Inc.
17. PATOSWO (Patent Online System World)
Type: Bibliographic.
Content: contains more than 130,000 citations, with abstracts, to international patent applications published by the World Intellectual Property Organization (WIPO). Includes international patent classification, title, names and addresses of assignee and legal representative, designated countries, international priority date and country, and filing and publication dates. Typical data elements include patent number, document type, international patent classification; title; name and address of inventor, assignee and legal representative, dates of filing, publication and grant, examination information, and priority information.
Subject Coverage: International patent applications.
Time Span: 1983 to date.
Updating: 1000 records every 2 weeks.
Online Availability: STN International (PATOSOW).
18. PCTPAT
Type: Bibliographic.
Content: Contains more than 142,000 citations to Patent Cooperation Treaty (PCT) and European PCT applications published in the PCT Gazette since 1978. For PCT records from 1978 to 1982, contains application number and date, priority number and date, and classification data. For European PCT records, contains application, inventor and repesentative, title, abstract, designated, states, application number and date, priority number and date, and classification data. For all records from 1983 to daate, contains application, inventor and representative, title, abstract, designated states, application number and date, priority number and date, and classification data.
Subject Coverage: The Patent Cooperation Treaty (PCT) applications.
Time Span: 1978 to date.
Updating: Biweekly.
Online Availability: QUESTEL ORBIT.
19. Sensor Review
Type: Directory; full-text.
Content: Contains the complete text of Sensor Review, a monthly newsletter covering patent applications related to sensors and sensor technologies. Includes analyses of patent activity and patent application data, including title, class, name of applicant, and country of application.
Subject Coverage: Sensor technology.
Time Span: 1988 to date.
Updating: Monthly.
Availability Online As Part Of: Newsletter Database (described in a
separate entry).
20. Space Patents
Type: Bibliographic.
Content: Contains approximately 2080 citations, with abstracts, to patents in all areas of space technology. Covers launch vehicles, space vehicles, spacecraft communications, command and tracking systems, spacecraft design and testing, spacecraft and payload instrumentation, spacecraft propulsion and power, ground support systems and facilities, chemistry and materials, and spacecraft subsystem engineering.
Subject Coverage: Space technology patents.
Time Span: 1904 to 1984.
Updating: Not updated.
Online Availability: ESA-IRS (67: SPACEPA).
21. TRANSIN
Type: Directory.
Content: Contains more than 3000 descriptions of offers and requests for transferable technologies, including new products, processes, and techniques. Each item is described by the country of patent or country in which a license is available or sought; title; name, position, and address of patent holder or item announcer; abstract describing the technology and its advantages; country of frigin; international patent classification codes that identify industrial and scientific areas of interest; developmental stage of the technology offered or sought; and technical skills required or developed. Information is obtained from such sources as research centers, public laboratories, private industry, and independent inventors.
Subject Coverage: Technology transfer; patnets; new products and inventions; industrial know-how.
Time Span: 1989 to date.
Updating: Monthly.
Online Availability: QUESTEL ORBIT.
22. WPI/APIPAT
Type: Bibliographic.
Content: Contains patents covering petroleum refining, the petrochemical industry, and synthenic fuels. Features the indexing capabilities of the American Petroleum Institute's APIPAT file (described in a separate entry) combined with the classification and coding system of Derwent's World Patents Index (described in a separate entry). Typical data elements include document number, patent title, patnet assignee, company code, inventor, patent codes, priority codes, patent family codes, patent country, designated states, abstract, and International Patent Classification (IPC) codes.
Subject Coverage: Petroleum and energy industries worldwide, including chemistry, engineering, and economics relevant to the refining of crude oils to make fuels, lubricants and other procucts; transportation and storage of petroleum products; environmental matters bearing on petroleum; processes and materials that could replace conventional petroleum products; petrochemicals; popelines; tankers; C1 and other technologies; chemicals used in the oilfields in drilling , producing, stimulating, and enhanced recovery.
Time Span: 1963 to date.
Updating: WPIA, monthly; WPILA, weekly.
Online Availability: ORBIT QUESTEL.
23. WPIM (World Patents Index Markush)
Type: Full-text; numeric.
Content: Contains graphic representation of generic (Markush) structures commonly used in patents for pharmaceuticals, agricultural chemicals, and general chemical compounds, to represent compounds that are wholly or partially variable. Covers Markush structures from patents included in Derwent's Chemical Patents Index Sections B (farmdoc), C (Agdoc), and E (Chemdoc) (WPI (World Patents Index), described in a separate entry). Includes compounds that are removed, or used to effect removal, when this is an important feature of the patent; all compounds described as new; new catalysts; all products of new processes, including materials purified in new ways; compounds in novel methods of analysis or detection; and key ingredients of compositions. Structures are grouped under 21 concepts, called "superatoms," shich specify a particular attribute. Users can transfer search results to WPI to facilitate retrieval of complete patent information.
Subject Coverage: Markush structures used in pharmaceutical, agricultural chemicals, and general chemical compounds used in patents.
Time Span: 1987 to date.
Online Availability: QUESTEL ORBIT.
B. Foreign Patent
1. BREV
Geographic Coverage: Belgium.
Type: Bibliographic.
Content: Contains citations, with abstracts (since 1982), to more than 255,000 Beigian patents and other European patens valid in Belgium. Each record includes date, number, and language of application; patent type; invention title; inventor name; priorities by date and country; and International Patent Classification code. Corresponds to Recueil des Brevets Brevets belges d'Invention and The European Patent Bulletin. Sources include the Belgian Ministry of Economic Affairs and European Patent Office.
Subject Coverage: All sectors of patentable activities in Belgium.
Time Span: 1973 to date.
Updating: monthly.
Online Availability: BELINDIS
2. Canadian Patent Index
Geographic Coverage: Canada.
Type: Bibliographic.
Content: Contains more than 200,000 citations to Canadian patents. Enables the user to search by patent or application number, classification, and keywords. Corresponds to the Patent Office Record.
Subject Coverage: Canadian patents.
Time Span: 1981 to date.
Updating: 500 records a month.
Online Availability: University of British Columbia Library.
3. Canadian Patent Reporter (CPR)
Geographic Coverage: Canada.
Type: Bibliographic; full-text.
Content: Contains the complete text and headnotes of approximately 5900 decisions covered in Canadian Patent Reporter. Covers significant cases on patents, industrial design, copyrights, and trademarks from the Commissioner of Patents, Registrar of Trade Marks, and various Canadian courts. Also includes cases tried under the combines Investigation Act and the Competition Act Provides cross-references to other Canada Law Book databases.
Subject Coverage: Canadian patent and copyright legal decisions.
Time Span: 1977 to date.
Updating: Biweekly.
Online Availability: Infomart Online.
4. Caribbean Patent Information Network (CARPAT)
Geographic Coverage: The Caribbean.
Type: Bibliographic.
Content: Contains more than 2300 citations, with abstracts, to patents issued primarily in English-speaking Caribbean countries. Data are obtained from Industrial Property Offices of Registrar Offices in each country. Corresponds to Caribbean Patents Index.
Subject Coverage: Patents issued in antigua and Barbuda, Bahamas, Barbados, Belize, Dominica, Grenada, Jamaica, St. Christopher/Nevis, St. Lucia, St. Vincent, Trinidad and Tobago, Suriname, and Haiti.
Time Span: Varies by country, with earliest data from 1966.
Updating: Periodically, as new data become available.
Online Availability: United Nations Economic Commission for Latin
America and the Caribbean (ECLAC), Subregional Headquarters for the Caribbean.
5. Chinese Patent Abstracts in English Data Base
Geographic Coverage: The People's Republic of China.
Type: Bibliographic.
Content: Contains citations, with English-Language abstracts, to nearly 50,000 patents issued by the Patent Office of the People's Republic of China. Includes patent numbers from equivalent patents published in other countries. Record items include standard bibliographic data and patent family information.
Subject Coverage: All technologies patentable in the People's Republic of China.
Time Span: April 1985 to date.
Updating: 400 records every 2 weeks.
Online Availability: DIALOG Information Services, Inc.
6. EPAT
Geographic Coverage: Europe.
Type: Full-text; bibliographic.
Content: Lists patents applied for and published in the European Patent Office's printed European patent Bulletin. Contains more than 560,000 citations, with abstracts in the original patent language, to claims in English and French, and all bibliographic and legal information.
Subject Coverage: European patnets.
Time Span: June 1978 to date.
Updating: Weekly.
Online Availability: UQESTEL ORBIT.
7. JAPIO
Geographic Coverage: Japan.
Type: Bibliographic.
Content: contains citations, with abstracts, to approximately 4 million unexamined Japanese patents. Each record includes title, inventor, patent holder, application date and number, patent number, publication date, Japanese Classification Number, and International Patent Classification System code.
Subject Coverage: Japanese patent, utility model, design, trademark, PCT application, Japanese trial, and Japanese registration documents, as well as some foreign patent documents, covering all mechanical, electrical, chemical, and physical technologies.
Time Span: October 1976 to date.
Updating: 22,000 records a month.
Online Availability: ORBIT QUESTEL.
8. JUREP (Database on the Jurisprudence of European Patents)
Geographic Coverage: Europe.
Type: Bibliographic; full-text.
Content: Contains more than 6200 citations, with abstracts, to European legal decisions relating to patents. Covers judgments from the Technical and Legal Boards of appeal and the enlarged Board of Appeal of the European Patent Office (EPO), the National Courts of the member states of the European Patent convention, and the European communities Commission and Court of Justice; legal advices of the EPO Examination Divisions; citations to the Official Journal of the European Patent Office; nonpatent publications concerning the European Patent Convention; the Complete text of the European Patent Convention and guidelines; and the complete text of the Community Patent Convention.
Subject Coverage: European legal decisions relating to patents.
Time Span: 1973 to date (laws and regulations); 1978 to date (patent decisions).
Updating: Bimonthly.
Online Availability: QUESTEL ORBIT.
9. LEXIS(r) United Kingdom & Commonwealth Legal Libraries
Geographic Coverage: United Kingdom and Ireland.
Type: Full-text.
Content: Consists of several libraries of United Kingdom, European, and Commonwealth statutes, statutory instruments, case decisions, and legal journals.
Subject Coverage: United Kingdom and Commonwealth case law.
Time Span: Varies by source.
Updating: Varies by source.
Online Availability: LEXIS.
10. PATOLIS (Patent Online Information Service)
Geographic Coverage: Japan, with some international coverage.
Type: Bibliographic; directory.
Content: Contains several files on patents and trademarks issued by the Japanese Patent Office.
Subject Coverage: Patents and trademarks issued by the Japanese Patent Office.
Time Span: Varies.
Updating: Monthly.
Online Availability: Japan Patent Information Organization (JAPIO).
6.CD-ROM
A. INTERNATIONAL PATENT
1. JOPAL-ROM
Type: Bibliographic.
Content: Contains more than 100,000 citations to non-patent literature covering patents. Includes IPC classification symbols. Corresponds to the Journal of Patent Associated Literature. Produced in cooperation with 13 intellectual property offices worldwide.
Subject Coverage: Patents.
Time Span: 1980 to date.
Updating: Annual.
Vendor: World Intellectual Property Organization (WIPO).
2. ROMARIN
Type: Full-text; image.
Content: Contains the complete text and images (where available) of more than 290,000 patents registered in WIPO's International Trademarks Register.
Subject Coverage: Patents.
Time Span: Current 20 years.
Updating: Monthly.
Vendor: World Intellectual Property Organization (WIPO)
3. Search Master(r) Intellectual Property Library
Type: Full-text.
Content: Contains 15 Matthew Bender publications that deal with intellectual property law: Computer Law, Intellectual Property Counseling and Litigation, International Computer Law, Nimmer on Copyright, Milgrim on Trade Secrets, Patent Licensing Transactions, Patent Litigation, Patents, Trademark Protection and Practice, World Trademark Law and practice, world Patent Law and Practice, New York Intellectual Property handbook, Patent Office Rules and Practice, California Handbok of Intellectual Property.
Subject Coverage: U.S. intellectual property law.
Time Span: Current edition.
Updating: Quarterly.
Vendor: Matthew Bender & Company, Inc.
4. Investigational Drugs Database (Iddb)
Type: Bibliographic; full-text; image.
Content: Provides access to information on the research and development activities within the pharmaceutical industry, especially pharmaceutical compounds, patents, and applications. Comprises 4 modules: Commercial-provides information on sales forecasts, licensing opportunities, financial data and corporate strategies. Sources include newsletters, financial reports, business databases, and company communications. Literature-provides citations to articles appearing in key biomedical and chemical journals. Meetings-provides information from scientific conferences. Patents-covers patents filed through the World, European, U.S. and Japanese patent systems; provides coverage of novel compounds, new indications, processes, formulations, diagnostic tests, and biotechnology discoveries. Searchable by company name, identification name, patent name, developmental status, indications and actions, Chemical Abstracts Service Registry Number, chemical name, synonyms, class, licensing, sales potential, patents, bibliography, pharmcast, biology, pharmaceutics, clinical data, evaluation, and current opinion. Weekly updates are available on diskette or via the Internet on day of release.
Subject Coverage: Pharmaceutical research and development relating to drugs and resulting patents.
Year First Available: 1993.
Updating: Weekly.
Vendor: current Drugs Ltd.
5. GENESEQ
Type: Bibliographic; full-text; numeric.
Content: Contains descriptions of nucleic acid and protein sequences from patent applications and granted patents covers all nucleotide sequences greater than 9 bases, all protein sequences greater than 3 amino acids, and probes of any length. Includes type of molecule (e.g., DNA, RNA, protein), length of molecule, accession number, description of the sequence, genus and species of the organism from which the sequence was obtained, tqble of sequence-specific features, patent number, publication date, priority details for the patent, patent assignee, patent inventors, patent title, and patent sequence. Nucleotide sequences are in IUPAC format, and protein sequences are in one-letter format. Data are derived from patent applications and granted patents published by 14 major patent issuing authorities, including the European Patent Office (EPO), Japan Patent Information Organization (JAPIO), and U.S. Patent and Trademark Office (USPTO). Corresponds to the GENNESEQ online database.
Subject Coverage: Nucleic sequence data.
Time Span: 1981 to date.
Updating: Quarterly.
Vendor: Derwent Information Ltd.
7. MAGNETIC TAPE
7-1. MDDR-2D
Type: Bibliographic; image; directory.
Content: Contains more than 50,000 models of bioactive chemical compounds covered by recent patent applications from 11 countries worldwide. For each compound, includes two-dimensional (2D) structure, bioactivity data, patent and company information, and bibliographic references. Enables the user to identify pharmacophores and explore hypotheses about new pharmacophores by using MACCS-ll software from MDL Information Systems, Inc. Corresponds to Drug Data Report.
Subject Coverage: Bioactive chemical compounds.
Time Span: July 1988 to date.
Updating: Semiannual with monthly "previews".
Vendor: MDL Information Systems, Inc.
7-2. MDDR-3D
Type: Bibliographic; image; directory.
Content: Contains more than 50,000 three-dimensional (3D) models of bioactive chemical compounds covered by recent patent applications from 11 countries worldwide. For each compound, includes two-dimensional (2D) structure, 3D model, bioactivity data, patent and company information, and bibliographic references. Enables the user to identify pharmacophores and explore hypotheses about new pharmacophores by using MDDR-3D software from MDL Information Systems, Inc. Information corresponds to Drug Data Report.
Subject Coverage: Bioactive chemical compounds.
Time Span: July 1988 to date.
Updating: Semiannual with monthly "previews.".
Vendor: MDL Information Systems, Inc.
8. Web Site (modified from IP Tools Product Evaluation by Darwin K. Carr& Melissa Yuqin Lu, to see the original, refer to "http://www.piercelaw.edu/ipmall/ipcorner/evals97/iptools.htm")
The following resources are included as reliable web sites for novelty
search: The AIDS Patent Project, Biotechnology Patents, Electronic Data
Systems Shadow Patent Office, MicroPatent Patent Retrieval, QPAT.US, US
Patent and Trademark Office and the IBM site. These sites have been evaluated
and compared to see if they can perform the novelty search.
8-1. The AIDS Patent Project
URL: http://patents.cnidr.org/pto/access.html
Sponsors: CNIDR, USPTO and NSF
Description: The Aids Patent Project has created a home page containing links to various access points for "AIDS Patents" and related databases. The page allows a user to browse or do free-text or boolean searches of the AIDS Patent Database and also allows a user to search the US Patent
Classifications Database (the search capability is new as of 10/17/96, previously you could only browse this database).
The AIDS Patents Browse Page lists all of the patents in the collection and lets you browse them without searching. The screen list patents in ascending patent number order with the patent title and allows a user to browse the abstract, front page, full patent, images and similar patents.
Full text and boolean searches allow you to search through the full text or by the following fields: title, abstract, patent number, issue date, application number, application date, international class, inventor name and assignee. The following fields can be searched in the U.S. databases only: patent summary, patent claims, detailed description, drawing description, government interest, U.S. Class/Subclass, inventor city, inventor state, inventor country, assignee city, assignee state, assignee country, legal representative, primary examiner, assistant examiner and references.
The U.S. Classification database features the entire manual of classification as well as the definitions. The search feature on this database has been developed and allows you to make a case-insensitive query of the classification database using a command-line style search syntax.
You are able to use all of the same features available through the search page. The current classification of a patent is now listed along with the original class the patent was issued under. The current classification listing includes any changes to the classification of the patent since it's issue due to a patent data correction or change to a class definition or structure. Also detailed information about your results are listed at the top of the search results page. This will show how many times each of your terms occurred and in how many documents. This will assist you in refining your search.
Period Covered: This database does not specify the period of coverage, but states that roughly 2000 research oriented patents relating to AIDS are available.
Language: English
Updates: Data for U.S. AIDS Patents issued up to 7/1/97 are now available.
Pros: Free access to this collection of AIDS patents is a boon to AIDS researchers and scientists and for patent attorneys specializing in pharmaceuticals. U.S. Patent Classification database is from a direct link to the USPTO and is complete. You can now easily search the U.S. Patent Bibliographic Database for patents related to U.S. AIDS patent by using the 'More - this Class', 'More - this Inventor' and 'More - the assignee' buttons which appear on the top of each patent page.
Cons: Images are extremely small and a special graphics viewer
is needed in order to see the drawing pages. Not all patents and thus some
pertinent patents may be excluded through classification. Coverage is very
narrow as it is limited to AIDS patents.
8-2. Biotechnology Patents
URL: http://www.inform.umd.edu/EdRes/Topic/AgrEnv/Biotech/Biotech_Patents/
Sponsors: Biotechnology Information Center; National Agricultural Library/USDA, NSF, Sun Microsystems, WAIS inc. and the USPTO.
Description: This database is a compilation of all biotechnology patents granted since 1994 in alphabetical order by title. It also includes links to the PTO Information Office and to the Biotechnology Patent Classifications from the PTO manual. Patents are shown in full text form without images and there is no way to search full text without linking to the PTO information office which in turn refers users to WAIS source files.
Period Covered: 1994 - 1995
Language: English
Updates: This database is no longer updated
Pros: Give full text of biotech patents from 1994-95 for free. PTO link and biotechnology classifications may save time for the biotech practitioner.
Cons: Lack of direct search capability and the failure to include
patent numbers with the titles makes it difficult to find prior art quickly.
Lack of images is also a negative, but this drawback is common in the patent
field. This database includes patents from 1994 and 1995.
8-3. Electronic Data Systems Shadow Patent Office
URL: http://www.spo.eds.com/patent.html
Sponsor: Electronic Data Systems (commercial database)
Description: The EDS Shadow Patent Office claims to offer "easy-to-use, highly effective patentability and infringement searches against the full text of the 1.7 million U.S. Patents issued since January, 1972." In order to use this service, you must register and you will be billed for any searches which you perform. This service allows a user to search based upon subject matter, similarity to existing patents, issue date range, patent number, class or subclass. Searches result in reports which list:
* a) The top three patent classes found in the search and their frequency
* b) Patent number for each patent in the report
* c) Issue date for each patent in the report
* d) Class and Subclass for each patent in the report
* e) Title for each patent in the report
A new Classification Search and Classification Analysis feature has been added to the system. The Classification Analysis feature has been added at no-cost. This feature is shown in the output of your Subject Search, Infringement Search, and new Classification Search services. This new feature consists of an analysis that indicates which classes/subclasses are most likely to contain patent similar to the invention described by your search strategy. With the information provided by the Classification Analysis, you can then search a specific subclass for additional relevant art similar to the invention or patent that you want to search. The addition of these capabilities provides a complete search approach that optimizes the application of your search strategy to find all the art relevant to your search needs.
The cost for the various searches are as follows:
INFRINGEMENT:
Input Returns Output Cost $
Patent Number 25 most relevant Standard 149
Patent Number 25 most relevant Enhanced 174
Patent Number 50 most relevant Standard 174
Patent Number 50 most relevant Enhanced 224
2-5 patent numbers 50 most relevant Enhanced 274
6-10 patent numbers 50 most relevant Enhanced 324
Patent Number 50-3,000 most relevant Enhanced 4.50 per patent
2-5 patent numbers 20-3,000 most relevant Enhanced 5.50 per patent
6-10 patent numbers 50-3,000 most relevant Enhanced 6.50 per patent
Standard output:
* Classification analysis
* Top three patent classes found and their frequencies
* Patent number for each patent in the report
* Issue date for each patent in the report
* Filing date for each patent in the report
* Current U.S. class and subclass for each patent in the report
* Title for each patent in the report
* Patent status for each patent in the report
Enhanced output:
* Standard output
* Inventor
* Assignee
* Abstract
* Exemplary Claim
SUBJECT SEARCH:
Input Returns Output Cost $
Word Frequency 50-3,000 most relevant Enhanced 4.50 per patent
1-49 words 25 most relevant Standard 49.00
50-999 words 25 most relevant Standard 99.00
1-49 words 25 most relevant Enhanced 74.00
50-999 words 25 most relevant Enhanced 124.00
1-49 words 50 most relevant Standard 74.00
50-999 words 50 most relevant Standard 124.00
1-49 words 50 most relevant Enhanced 124.00
50-999 words 50 most relevant Enhanced 174.00
The EDS Shadow Patent Office also offers free browsing through the full text of recent patents (found to be approximately 10 months). This feature is organized in decending date order with each week having its own line. Clicking on the link, it gives a weekly class listing showing how many patents were issued in each class. Linking to a class, there is a further listing, in ascending order by patent number, of the patent numbers and titles of patents issued during the week. However, you are unable to access the full text of any of these patents without registering with the "EDSPO" and paying a fee. Also, inventors and assignees are not listed by this browsing feature.
Period Covered: January, 1972 to present
Language: English
Updates: Weekly
Pros: Offers wide range of options for full text searching of all patents published since 1972. Recent browsing feature is good for those attorneys who specialize in certain classes and wish to know what is being issued. The new classification search features allow you to supplement your search strategy to find all art relevant to your search needs.
Cons: to get anything of value, you must pay a fee. Also, some
areas of practice have pertinent prior art patents issued before 1972 which
will not be caught in this type of search.
8-4. MicroPatent Patent Retrieval
URL: http://www.micropat.com/info/prelegal.html
Sponsors: Internet Multicasting Service, WAIS Inc., Interop Company, MCI, O'Reilly & Associates and Sun Microsystems.
Descriptions: This site is a sales site. There is a little free service for the register to obtain free access to the full-text of all patents issued during the current week. You can order any patent issued by the U.S. Patent and Trademark Office since 1976. You can search by any combination of approximately 20 different bibliographical fields including title, abstract, assignee, inventor, US and IPC classification numbers, priority data, application numbers, dates, inventor location, etc., or by keywords that appear in abstracts and titles. The combined databases include the available patent drawings as well as front page data.
Searchable Patent Databases:
* Patent Database -- U.S. granted patents back to 1975.
* EP Patent Application Database -- Patent applications back to 1978 as published by the European Patent Office (EPO).
* WO Patent Application Database -- Patent applications back to 1978 as published by the World Intellectual Property Organization (WIPO).
* JP Kokai Unexamined Patent Application Database -- Patent applications back to 1995 as published by the Japanese Patent Office (JAPIO).
* PatentImages on the PatentWEB current through:
o EP-A Publications April 2, 1997 (through 0766507)
o PCT Publications March 13, 1997 (through 9709311)
* DOWNLOAD (actual document copy as published by the respective Patent Offices -- text and images)
* Front Page Previews ... FREE with the purchase of the same document within 24 hours... otherwise $1.00 per patent
* Full Document Download ... $3.00 per patent
* Front Page Download Only ... $1.00 per patent
* EMAIL (ASCII text only -- US patent only) .... $1.50 per patent
* FAX (actual document copy as published by the respective Patent Offices -- text and images)
8-5. QPAT.US
URL: http://www.qpat.com/
Sponsor: Questel. Orbit, Inc.
Description: QPAT-US has the full text of all U.S. patents issued since Jan. 1, 1974 (over 1.8 million records!) which is available to paying subscribers only, QPAT-US offers users who register free search and display access to all of the patent abstracts contained in the database.
Searchable Patent Databases:
* Full Text Subscription Database --- Search the full text of all U.S. patents issued since 1974. Accessible to paying subscribers only.
* Abstracts Database --- Search the front page information of all U.S. patents issued since 1974. Accessible at no cost to individuals who register with QPAT-US.
* Demo Database --- Search a demonstration full text database of 6,541 patents. Accessible at no cost and without registration.
The fee schedule is as follows:
* QPAT-US subscriptions start at $195/month USD or $1,995/yr USD and offer unlimited search and retrieval of over 20 years of full text U.S. patent data.
* QPAT-US Annual Pricing Schedule (USD)
+ $1,495 second user ID
+ $995 third and additional user IDs
+ $1,495 first user ID
For now, QPAT-US does not offer any type of patent images. Questel-Orbit
is working on providing an image solution to its subscribers in the near
future.
8-6. Patent Searches in US Patent and Trademark Office
URL: http://www@pioneer.uspto.gov/
Sponsor: CNIDR USPTO MCNC
Descriptions: This is free abstract searching service site. Patents issued up to July 1, 1997 are now available for searching. Patents Project at CNIDR which provides access to both the U.S. Patent Bibliographic Database, which includes bibliographic data from 1976 to 7/1/97 , and the AIDS Patent Database, which includes the full text and images of AIDS related patents issued by the U.S., European and Japanese Patent offices.
Patent Database:
* Patent Boolean Search Page - This page provides an interface for two-term Boolean searching of the U.S. Patent Database.
* Patent Advanced Search Page - This page provides an interface for advanced searching of the U.S. Patent Database. You can search by Patent Number, Inventor Name, Patent Abstract, Inventor City, References, Inventor State, Patent Number etc.
* Patent Number Search Page - You can search by patent number.
* Browse the U.S. Patent Classifications Database - You can search by U.S. Patent
Classifications Database:
The fee schedule is as follows:
* Regular Services for Patent & Trademark Copies
* U.S. Postal Service Returns
* US/Canada/Mexico & International Customers - Processed within 2-3 business days of receipt and returned via US Postal Service: $3.00 per copy
* Plant Patent Copies in color
* US/Canada/Mexico & International Customers - Processed within 2-3 business days of receipt and returned via US Postal Service: $12.00 per copy
* Public Service Window (Local Customers Only)
* "Regular" Orders received at the Public Service Window (PSW) located at CP3/4 ONLY -- Processed within 2-3 business days of receipt and returned to Customer's PSW Box: $3.00 per copy
* "Special" Orders received at the Public Service Window (PSW) located at CP3/4 ONLY -- Processed within 24 hours of receipt and returned to Customer's PSW Box: $6.00 per copy
* Fax Back Services for Patent & Trademark Copies
* Fax Back Regular US/Canada/Mexico Customers - Processed within 2-3 business days of receipt, returned via FAX: $3.00 per copy
* Fax Back Special US/Canada/Mexico Customers - Processed within 24 hours of receipt and returned via FAX: $6.00 per copy
* International Customers - Processed within 24 hours of receipt and returned via FAX: $25.00 per copy
* Fax Back Express US/Canada/Mexico Customers - Processed within 3 hours of receipt and returned via FAX: $25.00 per copy
* International Customers - Processed within 3 hours of receipt and returned via FAX: $37.50 per copy
* Federal Express Services for Patent & Trademark Copies -- US/Canada/Mexico Customers - Processed within 24 hours of receipt and returned via Federal Express:
$25.00 for first copy, $6.00 per copy for each additional copy
* International Customers - Processed within 24 hours of receipt and returned via Federal Express:
$28.50 for FedEx and $6.00 per copy for copies 1 - 5; same charge applies for additional copies ordered, in increments of 5. (Ex: 13 copies ordered: $85.50 FedEx, $78.00 Copies, total order cost of $163.50)
* FedEx Charged to Customer's Account -- US/Canada/Mexico & International
Customers - Processed within 24 hours of receipt and returned via Federal
Express: $6.00 per copy
8-7. IBM Patent Server Home Page
URL: http://patent.womplex.ibm.com/
Sponsors: IBM Corp.
Description: This server lets you access over 26 years of U.S. patent descriptions as well as the last 17 years of images. The first entries date back to January 5, 1971. You can search, retrieve and study over two million patents. This site continually strives to maintain accurate and current data. However, sometimes problems occur. There is a link that tells you which time periods are known to be missing or contain incomplete patents or images. The incomplete patents may be missing some data fields, such as inventor names or the text of the patent claims. The patent server provides access to the bibliographic data and text of all claims of numerous patents issued by the USP&TO from 1974 to present, plus some patents issued during 1971 to 1973. The server currently supports simple keyword, phrase, and patent number searches, as well as the use of boolean operators. The following fields are now searchable: Patent number, title, abstract, all claims, assignee, inventors and attorney/agent. All fields from the title down to the patents cited by the examiners, as well as the full text of U.S. patent specifications are searchable. The complete scanned image of a patent can be displayed. Images are available for patents issued from 1980 to 1996 (prior years are currently being added).
The patent references for the 22 years are hyperlinked, allowing users to locate and view prior art by navigating through all the cited patents. The link is bi-directional. Users can access not only the patents referenced by the examiners, but also access later patents that reference the existing document. In addition, the server includes information on the USPTO maintenance fee status of all patents. This provides users with information about renewal status of patents. A complete copy of a patent can be ordered from this system through Optipat Inc. for a fee by mail and fax.
The fee schedule is as follows:
* U.S. Patent copies: $2.50/patent, $5.00/patent published before 1/1/74
* Fax, 15 minutes: $9.00/patent
* Patent/Trademark file history: $.95/page up to 20 pages, $.40/additional page
* Assignment Index: $75/first search, $25 each additional
* Forward patent citation: $35/first citation, $12 each additional
* Family search: $50/first search, $25 each additional
* Publication watch: $10/month
* Certification service: $50 plus copy charges and applicable PTO fees
* Trademark search: $100, design and logo searches slightly higher
* Copyright service: $45/hour, $75 minimum
* Delivery of papers: $15-40 plus applicable courier fees
* Legalization of papers: $45/hour, $75 minimum
* Foreign patents: $15 plus $.25/page after 60 pages
* Foreign abstract: $50 first search, $10 each additional
Optisearch allows you to view the full patent text and bibliographic information in the patents you have located at NO additional charge (e.g. no "hit" charges). You may simply want to sign-on and download (view and save with your terminal program) the full text of six or seven patents.
This would only take a minute or two (theoretically). Optisearch is billed by the minute at $.80/minute ($48.00/hour). Optipat pays the communication charges because you dial a toll-free, nationwide 800 number for access. There are no additional charges. Optisearch is only available on account with monthly billing.
Period Covered: from January 1971 to current (with gaps as mentioned above)
Language: English
Updates: was updated to the day before I conducted this research
Pros: Comprehensive access to the full text of patents and images (for patents issued after 1980). There is a charge for this service, but it is one of the most reasonably priced services available. Optipat tracks their patent copy, file wrapper, and paralegal services by computer so that they can match the demands of your schedule. All of their work is documented by docket number to simplify you internal administration. You can easily assign costs to the appropriate budget by case, client, or technology areas. It is a good database if you locate the patents you need and provides an opportunity to get hard copies for a reasonable price.
Cons: This database does not contain information on patents issued
before 1971. If your invention may have references that predate 1971 this
database will not provide a complete review of the art in your area. Otherwise
you should also be careful about the missing and incomplete patents in
the database. This database should not be relied upon for client research.
III. Scope of Novelty Search
(Return to top of page)
The purpose of novelty search is to determine whether there are any previous patents or printed publication(prior arts) that might prevent the searchers from patenting his idea. Under given specific purpose, novelty searcher tries to find most closely related patents or printed publication. On the other hand, state-of-the-art searcher tries to find most recently developed technology. Naturally he must search many science or technology journals.
Compared with infringement search, novelty search may not permit much time or money on it. If the invention were known as to be breakthrough, pioneer, he may invest more time and money, but, in normal situation, novelty searcher must restrict the scope of the search. In some cases, novelty search will not be performed because of economical limitation.
Normally, novelty search is performed through free sources, such as
USPTO shoe boxes, state library, or free web sites. If the invention is
considered a "big one", search may exceptionally be performed through commercial
online databases or CD-ROMs.
| Aim | Foreign
Patents or Publication |
Time to be
covered |
Source to consult | Printed
Publication |
Economic
Restriction |
|
| Novelty Search | to find closely
related docs |
relatively
important |
before the
invention |
Normally
cheap or free source |
patents +
printed publication |
strict |
| State-of-the-art Search | to find most
advanced technology |
very
important |
recent data | DIALOG,
science journals, etc. |
printed
publication + patents |
depends on |
| Infringement Search | to find many
closely related patents |
not important,
only domestic patents |
less than
17(20) year old documents |
as many
sources as possible |
only unexpired
patents |
generous |
If you are an inventor, the sooner you are searching prior arts, the better it is for your way of invention. If you have an idea, by searching related prior arts, you can modify your idea to a real invention. Even before conceiving an idea, if you have a problem around your job, by searching related prior arts, you can find a problem-solving ways which leads to an invention. In this case, the free web sites or PTDLs may be good sources for your novelty search.
If you are a patent attorney who are requested to file a patent application, you had better conduct novelty search before drafting the specification. Closely related prior arts found by you or your paralegal make you draft a better specification or give better advice to your client.
In conclusion, in determining the better time for the novelty search,
the basic principle is "the sooner, the better".
V. Pros & Cons of In-house Novelty Search
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1. Pros
In-house novelty search can be performed under continuous dynamic communication between searcher and inventor, because searcher, in this case, can more easily access to the inventor. In-house novelty search can be faster. In urgent situation, the search can be performed within the same working day or even within a few hours. It is impossible to anticipate this kind of express service from out-of-house searchers.
If a company or law firm has reasonably trained searcher, the cost for in-house search is lower than that for out-of-house search. In the case of novelty search, cheap web sites (IBM, or USPTO, etc.) may be enough to get a reasonable list of prior arts.
2. Cons
Practically, it is not easy to keep reasonably trained in-house searcher. Without experienced searcher, in-house search may produce unreliable information. It is not easy for most small or medium-sized companies to install necessary information sources, such as commercial online databases, or CD-ROM, etc.
3. Conclusion
In the case of novelty search, in-house search may be better than out-of-house
search. Especially in-house search may be much more effective, if the house
has reasonably experienced searchers and necessary information sources.
In the case of infringement search, the situation is quite different. Infringement
search demands a perfect list of unexpired patents to prevent disastrous
infringement suits. In this case, more experienced out-of-house searcher
may be needed to minimize the possibility of the suits.
VI. Suitable In-house Searcher
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1. Company
In a company, either patent division or inventor(researcher) can perform novelty search. Patent division is more experienced in searching methods. However, in this case, it is not easy to induce attention from researchers. Researchers are more experienced in technology itself, and search may inform him of new information which is useful for his research. However we cannot anticipate that most researchers are aware of searching methods. So the company must train researchers about searching methods. In conclusion, the more suitable in-house searcher is the inventor himself under the condition that he is reasonably trained.
2. Law Firm
In a law firm, either an attorney or a paralegal can perform novelty search. Attorney is more familiar with the invention, on the other hand, paralegal is more familiar with searching technique.
If novelty search is performed by paralegal, there must be good communication between attorney and paralegal. If the search is performed by attorney, the client of the case must endure high price of search. Normal client (tentative applicant) may not like the high cost before application. In many cases, clients require no novelty search to minimize the cost. In conclusion, novelty search had better be done by a paralegal under the condition that he maintains good communication with the attorney who is in charge of the case.
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