There are several types of patent searches for different objectives, e.g., for judging patentability, infringement, right to make, validity, state of the art, continuing and assignment, etc. Among them, patentability search is the simplest and most frequently encountered type. It is essential for judging whether an invention is patentable and is quite often done by patent examiners, patent practitioners, inventors, etc.
For an invention to be patentable, it must be useful, novel, and nonobvious in light of prior art (See 35 U.S.C. 101, 102 , and 103). As an invention is most likely useful, the difficulty lies in establishing its novelty and non-obviousness.
In determining whether an invention is of novelty and nonobviousness, one must look to the relevant prior arts. Generally speaking, there are two types of information sources to consult for relevant prior arts, one is patent documentation, and the other is non-patent literature. In many circumstances, a searcher may choose to do patent search manually or electronically. That means the searcher may either use paper documentation or electronic information resources, or both of them. For each type of electronic information sources, the information is usually kept in at least one of the three forms: databases (on-line), CD-ROM, and Internet (WWW).
Patent databases are stores of strategic technical, legal, and business-related information. The on-line searching in patent prosecution and litigation has become commonplace. Patent databases are generally of two types: those for subject searching and those for obtaining law-related information. This reflects the dual nature of patents themselves: they are both technical and legal documents. With the rapid increase of providers, patent search-related databases place greater demands on the information professionals, who must maintain awareness of what type of information resources to consult, the scope of the search, the time frame of the search, and when to use them. Mastering the scope, pros and cons of the various patent databases is important to do effective on-line patent searching.
Since the first patent database on CD-ROM was commercially introduced in late 1989, patent CDs have proliferated. Now, patent CD-ROMs are very useful patentability searching tools. CD-ROMs have several advantages, such as low cost and predictability, no connection time pressures, freedom to browse, and menu-driven software. The major shortcoming of patent CD-ROMs is that a CD-ROM is searched in isolation, and sometimes it seems necessary to be complemented.
The Internet is a new source for legal and technical information. In recent years, Internet and World Wide Web have been used more and more by patent practitioners in doing patentability searching. Now, numerous web sites which contain patent-related information have appeared. Internet is a good complement to other patentability searching sources. At present, the problem is that many of the sources in Internet are not updated and not accurate.
Therefore, with the rapid increase of electric information, patent searchers are facing more choices and also greater challenges. The requirement for a patent searcher is higher than before. A patent searcher should understand the present invention clearly and should be familiar with the field to which the present invention belongs, so that he/she can know the goal and extent of the search. The patent searcher should also know which databases to select to fit the searching task. The selection of databases is based upon the characteristics of the database, such as subject and time coverage, content, and language used.
Generally speaking, in order to do an effective and clean search, one should not assume that selecting only one database is enough to fit the task. The patent searcher should take into account the searching subject to decide which databases to select and which searching strategy to employ, for example, as to old technology (such as mechanics, , etc.), the searcher should go back even to the beginning of this century; as to new technology, he/she should not; and as to searching new medicine product, key word searching method is more effective than other ones. In short, the more the patent searcher knows about the subject searched and patent search-related databases, the more effective the patent search is.
Doing patentability search in the United States of America, a searcher may consult two types of information: patent document, and non-patent literature. According to the media where information existing, all the information can also classified into two types: one is printed information, and the other is electronic information which contained in on-line databases, CD-ROM databases, or Internet Web Sites.
A firm receiving a patentability search task always faces the choice of the scope and time frame of the search. For example, if the searcher does the search using printed patents, he/she should consider the subject and classification of the invention to decide which groups or subgroups to consult. If he/she wants to do the search by using electronic products, he/she should consider which databases or Web Sites to select. The time frame of the search varies from subject to subject, for some subjects, such as mechanical devices, the searcher has to consult patents or non-patent literature back to very early time, in some cases, even back to the beginning of the century, and for computer technology, it is not necessary to do so.
Sometimes, the firm has to decide whether to conduct the search in-house or farm it out. When the firm realizes that the search task is beyond the staff's technological ability, or conducting search in-house takes too much time and it is too expensive, farm it out to a capable searching office.
Pros of conducting the search in-house are: first, the firm can make the money, not give the money to others; secondly, it is easier for experienced patent searchers or patent attorneys to supervise the searching quality. Cons of conducting the search in-house are: first, because of the difficulty of the invention and the technical backgrounds of the staff, the search sometimes is beyond the firm's ability, thus, the quality of in-house searching is a question; secondly, for too difficult searches, comparing to the labor and time spent, the income is not reasonable.
If completed in-house, the firm should consider who are the indicated searchers. In order to make a suitable decision, several factors should be considered, the match of technology involved in the invention and the potential searchers, the experience of the potential searchers, and the work pressure of the potential searcher at present. If the searching task requires, the firm may think about assigning several searchers with different technical backgrounds to cooperate to complete the task. While maintaining the search quality, it is better to provide more chances to junior searchers for practice.
In the United States of America, if a patent searcher decides to do a patent search by resorting to electronic resources, he/she may choose suitable on-line databases, CD-ROM databases, and Internet sites. Effective combination of these resources may make the search more efficient.
For the purpose of showing, the following are some of the selected commonly used on-line databases, CD-ROM databases, and Internet sites.
A. Which on-line databases to consult to find international patents?
WPI (World Patents Index)
Vendors: DIALOG (Files 351, 352,280); ORBIT(WPI, WPIL, WPAT); QUESTEL (WPIL); WESTLAW (WPI, WPIL).
Coverage: 1963 to date
Update: Weekly
Data Type: Bibliographic
Provider: Derwent Information; London, U.K.
Description: WPI contains more than 14 million patent documents from 40 patent issuing authorities around the world. Records include images, consisting of intellectually selected drawings for electrical or mechanical technologies (beginning in 1988) and chemical structures (beginning in 1992). Equivalent patents are grouped together by patent family in the basic patent record. Special chemical indexing is available to Derwent subscribers, including manual and fragmentation codes and polymer indexing. Pharmaceutical patents are included from 1963 to date, agricultural chemical patent from 1965 to date, and polymer and plastics patents from 1966 to date. Coverage of all chemical patents began in 1970; coverage of all patents irrespective of subject began in 1974. Full coverage of Japanese unexamined patents began in1996.
Pros: WPI's patent family is efficient in saving patent searcher's time by avoiding too much retrieval. The abstract of each invention is rewritten by Derwent staff, and its accuracy makes it a valuable information resource.
Cons: Some of the International Patent Classifications (IPC) are not
accurate, as result of the different prospective and technological standard
of the countries giving the IPC. The coverage of some technological fields
is not strong, e.g., for mechanics is only dated back to 1974.
EDOC (European Patents Office Documentation File)
Vendors: Questel
Update: Monthly
Coverage: Varies with country, some data goes back to the 1800
Provider: Europe Patent Office, and the Institut National de la Propriete
Industrielle (INPI)
Description: EDOC covers published applications and issued patents of 18 industrialized countries, the EPO, PCT applications, and OAPI (African Intellectual Property Organization). Database records contain ECLA subject classification codes assigned by EPO.
Pros: The ECLA (European Patent Classification) is very useful to patent search, because it is accurate and specific.
Cons: EDOC does not provide patent titles, inventor or assignee information,
abstracts or claims. It is only in French.
EPAT (European Patents Register)
Vendors: Questel
Coverage: 1978 to date
Update: Weekly
Provider: Europe Patent Office, and the Institut National de la Propriete
Industrielle (INPI)
Description: EPAT provides bibliographic, administrative, and legal status information on all European and European Patent Convention patents and published applications. Records include patent title, IPC codes, inventor, agent, first claim, opponents, dates of opposition, designated countries, and legal status changes.
Pros: It is in at least one of the three languages-English, German,
and French. New patent data is available immediately at the day it is published.
INPODOC
Vendors: Dialog (File 345, 253); ORBIT (INPD); QUESTEL (N/A); and WESTLAW (INPODOC)
Coverage: 1968 to date
Update: Weekly
Data type: Bibliographic
Provider: European Patent Office (EPO), Vienna, Austria
Description: The INPODOC/Family and Legal Status database, produced by the International Patent Documentation Center, Vienna, Austria, contains a listing of patents issued in 64 countries and patent organizations. INPADOC contains bibliographic data consisting of title, inventor, and assignee for most patents, as well as priority application numbers, countries, and dates.
Pros: It is the most comprehensive patent status database in the world. It contains some countries' patent information not available elsewhere.
Cons: The International Patent Classification codes are not very reliable.
B. Which on-line databases to consult to find U.S. patents?
US PATENTS FULLTEXT
Vendors: Dialog (654, 653, 652); Westlaw (Patent-US, Patents-90, 80, 70)
Coverage: 1971 to date
Update: Weekly
Provider: U.S. Patent and Trademark Office; Knight-Ridder Information, Inc.
Description: U.S. Patents Fulltext includes the complete text of U.S. patents issued from January 1, 1974, to date by the USPTO, plus partial coverage of selected technologies from 1971 through 1973. Included in the text is the "full disclosure" portion of the patent, which includes the precise details on the purpose, structure, and /or function of the device or substance. U.S. Patents Fulltext contains all granted U.S. utility patents, defensive publication, and design and plant patents.
Pros: There are many accesses to it.
Cons: Drawings are not included.
CLAIMS/U.S. PATENTS ABSTRACTS
Vendors: Dialog (340, 23, 24, 25); Orbit; and WESTLAW
Coverage: Chemical patents: 1950 to date; Electrical Patents and Mechanical patents:
1963 to date; Design patents and Plant patents: 1976 to date
Update: Monthly
Data type: Bibliographic
Provider: IFI/Plenum Data Corporation; Wilmington, NC, USA
Description: The CLAIM/US Patents Abstracts files contain utility patents
listed in the chemical, electrical, and general and mechanical sections
of the Official Gazette of the USPTO, as well as U.S. design and plant
patents. Chemical patent records through 1979 list equivalent patents from
Belgium, France, Great Britain, West Germany, and the Netherlands.
CLAIMS/U.S. PATENTS ABSTRACTS WEEKLY
Vendors: Dialog (125)
Coverage: Current 6-8 weeks
Update: Weekly
Data type: Bibliographic
Provider: IFI/Plenum Data Corporation; Wilmington, NC, USA
Description: CLAIM/US Patents Abstracts Weekly includes the most current weekly update and records from the current month.
Pros: It can be used as a companion to Dialog (25).
C. Which on-line databases to consult to find foreign patents?
CHINAPATS (Chinese Patent Abstracts in English)
Vendors: Dialog (344); Orbit
Coverage: April 1985 to date
Update: Monthly
Data Type: Bibliographic
Provider: European Patent Office
Description: optics Chinese Patent Abstract in English is produced by the Patent Documentation Service Center of the Patent Office of the People's Republic of China. The file includes all patents published in the People's Republic of China since the opening of the Chinese Patent Office on April 1, 1985. Records contain bibliographic information, as well as English-language titles and abstracts, for Chinese patents. Also included are patent numbers from equivalent patents published in other countries.
Pros: The patent numbers of equivalent patents published in other countries are very helpful to find equivalent patents in the language the searcher is familiar with.
Cons: The International Patent Classifications are not very accurate.
JAPIO
Vendors: Dialog (347); Orbit
Coverage: October 1976 to date
Update: Monthly
Data Type: Bibliographic
Provider: Japan Patent Information Organization; Tokyo, Japan
Description: JAPIO represents the most comprehensive English-language
source for Japanese unexamined patent applications (Kokai Tokkyo Koho)
covering all technologies. Abstracts are provided for applications originating
in Japan. Over 90% of incoming records and more than 70% of all records
in the file contain abstracts.
FPAT
Vendors: Questel
Coverage: 1966 to date; pharmaceutical patents (BSM), 1961 to date
Updates: Weekly
Data Type: Bibliographic
Provider: Institut National de la Propriete Industrielle (INPI, the French
Patent Office)
Description: FPAT provides information on all patents applied for and published at the INPI, French Patent Office. FPAT contains standard bibliographic data, IPC codes, titles and abstracts (in French), English-language index terms, and legal status data.
Pros: New patent data is available immediately at the day it is published.
Cons: The working language (French) keeps the searchers who don't know
French away.
D. Which on-line databases to consult to find relevant non-patent literature prior arts in a specific technology?
Besides patent documentation, non-patent literature is also very important to patentability searching. Depending upon which technology the invention is involved, the patent searcher may also search specific non-patent literature databases, which are joined into several kinds of industrial groups. The following are the list of the industrial groups:
Medicine, Biosciences, and Health Care Industry
Agriculture, Food Science, and Food Industry
Drugs and Pharmaceutical Industry
Chemistry and Chemical Industry
Science, Technology, and Engineering
Energy and Environment
For example, if the patent searcher wants to find non-patent literature
in chemistry and chemical industry, he/she may select on-line databases
listed below:
DATABASE NAME COVERAGE DATES DIALOG #
------------------------------------------------------------------------------------------
Analytical Abstracts 1980+ 305
Beistein 1779+ 390
CA SEARCH®: Chemical Abstracts®
1967+ 399
1980+
8th Collective Index 308
Period (CIP): 1967-71
9th CIP: 1972-76 309
10th CIP: 1977-81 310
11th CIP: 1982-86 311
12th CIP: 1987-91 312
13th CIP: 1992+ 313
Chemical Business NewsBase
1985+ 319
Chemical Economics Handbook
Dating from 1955 359
Chemical Engineering and Biotechnology Abstracts
1971+ 315
Chemical Industry Notes (CIN)
1974+ 19
Chemical Safety Newsbase 1981+ 317
CHEMNAME 1967+ 301
Chemplant Plus 1980+ 318
CHEMSEARCH 1957+ 398
Chemstats 1978+ 328
CHEMTOX Online Current 337
CLAIMS/Compound Registry Current 242
Current Contents Search 1990+ 440
Kirk-Othmer Encyclopedia of Chemical Technology
3rd and 4th editions 302
Material Safety Data Sheets-OHS
Current 332, 333, 334
PAPERCHEM 7/1967+ 240
7/1967+ 840
PASCAL 1973+ 144
Pesticide Fact File Current 306
PLASPEC Materials Selection Database
Current 321
Pollution Abstracts 1970+ 41
Polymer Online 2nd edition 322
TSCA Chemical Substances Inventory
1979+ 52
A. Which CD-ROM databases to consult to find international patents?
ESPACE-ACCESS
Vendors: MicroPatent
Coverage: 1978 to date
Update: Quarterly
Provider: European Patent Office (EPO)
Language: English
ESPACE-EP
Vendors: MicroPatent; Research Publications
Coverage: 1989 to date
Update: Weekly
Provider: World Intellectual Property Organization (WIPO) and European
Patent Office (EPO)
Language: English, French, and German
ESPACE-FIRST
Vendors: MicroPatent; Research Publications
Coverage: 1989 to date
Update: Bimonthly
Provider: World Intellectual Property Organization (WIPO) and European
Patent Office (EPO)
Language: English, French, and German
ESPACE-WORLD
Vendors: MicroPatent; Research Publications
Coverage: 1990 to date
Update: Bimonthly
Provider: European Patent Office (EPO)
Language: English, French, and German
B. Which CD-ROM databases to consult to find U.S. patents?
APS (Automated Patent Searching)
Vendors: MicroPatent
Coverage: 1975 to date
Update: Monthly
Provider: U.S. Patent and Trademark Office (USPTO)
Language: English
FullText
Vendors: MicroPatent
Coverage: 1991 to date
Update: Monthly
Provider: U.S. Patent and Trademark Office (USPTO)
Language: English
PatentImages
Vendors: MicroPatent
Coverage: 1990 to date
Update: Weekly
Provider: U.S. Patent and Trademark Office (USPTO)
Language: English
C. Which CD-ROM databases to consult to find foreign patents?
Chinese Patent Management System (CPMS)
Vendors: Chinese Patent Office (CPO)
Coverage: 1985 to date
Update: Monthly
Data Type: Bibliographic
Provider: Patent and Trademark Office (USPTO)
Language: Chinese
Description: Chinese Patent Management System (CPMS) covers the bibliographic information and the abstracts of all the applications filed and patents granted in China.
These include applications and patents for inventions and for utility models.
Cons: The International Patent Classifications (IPC) are not very accurate.
The language limitation keeps a lot people away.
D. Which CD-ROM databases to consult to find relevant non-patent literature prior arts in a specific technology?
Because of the importance of non-patent literature in patentability searching, a patent searcher may also search specific non-patent literature databases, which are joined into several industrial groups. The following are the list of the industrial groups:
Medicine, Biosciences, and Health Care Industry
Agriculture, Food Science, and Food Industry
Drugs and Pharmaceutical Industry
Chemistry and Chemical Industry
Science, Technology, and Engineering
Energy and Environment
For example, if the patent searcher wants to find non-patent literature
in chemistry and chemical industry, he/she may select CD-ROM databases
listed below:
DATABASE NAME COVERAGE DATES
--------------------------------------------------------------------------------------
Chemical Business NewsBase 1985+
Chemical Economics Handbook 1971+
Kirk-Othmer Encyclopedia of Chemical Technology
3rd and 4th editions
KR OnDisc Ei ChemDisc 1980+
KR OnDisc Toxicology & Pharmacology 1985+
PASCAL 1980+
Polymer Online 2nd edition
The following are a list some selected Internet Web Sites helpful to
patentability searching:
WIPO
http://www.wipo.int/eng/general/pcipi/otherwww/ipo.web.htm
This page provides addresses of existing web sites of industrial property
offices of some countries.
European Patent Office (EPO)
European Patent Office offers the legal status of all published European
and Euro-PCT applications, and links to other relevant sites.
MicroPatent Patent Retrieval
Paying user can get full text of patent since 1976. Free recent patent
service which allows registered customers to browse the issued patents
in a cheap way.
PATSCAN
http://unixg.ubc.ca:780/~rsimmer/patcat.html
It is a good way to do patentability search. The search reports may
be faxed within 48 hours.
Biotechnology Patents
http://www.inform.umd.edu/edres/topic/agrenv/biotech
A compilation of all biotechnology patents issued since 1994.
Japanese AIDS Patents
http://www.netax.com/`aengel/japan.aids.patents/list.htm
Text of Japanese AIDS Patents from 1995.
Japanese Patent Information Organization
Japanese Patent and Utility Model information. It links to Japanese
Science & Technology Information.
United Kingdom
http://www.netwales.co.uk/ptoffice/eight.htm
Information on patent searching and free literature.
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