Patent Searching Tools & Techniques

by Hunt, David; Nguyen, Long; Rodgers, Matthew

Edition: 1st

ISBN13: 9780471783794

ISBN10: 047178379X

Format: Hardcover

Pub. Date: 2007-02-02

Publisher(s): Wiley

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Summary

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 and 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.

Author Biography

DAVID HUNT is the founder of Landon IP Inc., one of the largest privately held patent search, analysis, and consulting firms in the United States. He holds a BA and MBA from the College of William & Mary and has worked as a senior manager in corporate strategy, market research, and competitive intelligence units of Freddie Mac in McLean, Virginia. Mr. Hunt has served as a project manager at large and small companies in the information technology areas. He is a member of PIUG and PATMG, which are the professional patent information users groups in the United States and England. Hunt is also a member of INTA, the International Trademark Association, and a previous member of SCIP, the Society for Competitive Intelligence Professionals.

About the Editors	p. ix
About Landon IP, Inc.	p. xi
Acknowledgments	p. xiii
Preface	p. xvii
Patent Law and Examination as Context for Patent Searching	p. 1
The U.S. Patent System	p. 2
The Benefits of Patent Protection	p. 3
Harmonization of Patent Laws	p. 4
The Paris Convention	p. 4
The Patent Cooperation Treaty	p. 5
Trade-Related Intellectual Property Rights (TRIPS)	p. 5
American Inventors Protection Act of 1999 (AIPA)	p. 5
The Priority Date	p. 6
The U.S. Provisional Application	p. 6
Continuing Applications	p. 6
Nonprovisional Applications	p. 6
Sections of a Patent	p. 7
A Note about Reading the Specification and the Claims	p. 8
Sections of a Patent File History	p. 8
Look before You Leap: Considerations before Filing	p. 10
Patent Examination Process	p. 11
The Job of the Patent Examiner	p. 12
The Examiner Follows the Courts	p. 12
The Examiner Follows Patent Examining Procedure	p. 12
Administrative Handling of the Patent Application	p. 12
Actual Patent Examination	p. 13
The Examiner Reviews Cited Patents and Nonpatent Publications	p. 15
The Examiner Conducts an Inventor Search ("Double Patenting" Search)	p. 16
The Examiner Applies the References	p. 17
After Patent Grant	p. 17
Backlog of Patent Applications	p. 18
Types of Patent Searches	p. 21
Patentability	p. 21
What Is a Patentability Search?	p. 21
When Is a Patentability Search Needed?	p. 22
What Needs to Be Searched in a Patentability Search?	p. 23
What the Searcher Needs to Know to Search Successfully	p. 23
Validity	p. 24
What Is a Validity Search?	p. 24
When Is a Validity Search Needed?	p. 24
What Needs to Be Searched in a Validity Search?	p. 25
Infringement	p. 26
What Is an Infringement Search?	p. 26
When Is an Infringement Search Needed?	p. 27
What Needs to Be Searched in an Infringement Search?	p. 27
Clearance	p. 28
What Is a Clearance Search?	p. 28
When Is a Clearance Search Needed?	p. 28
What Needs to Be Searched in a Clearance Search?	p. 29
State of the Art	p. 30
What Is a State-of-the-Art Search?	p. 30
When Is a State-of-the-Art Search Needed?	p. 30
What Needs to Be Searched in a State-of-The-Art Search?	p. 30
Patent Landscape	p. 31
What is a Patent Landscape Search?	p. 31
Benefits of Prior Art Searching	p. 31
The Mechanics of Searching	p. 35
Introduction	p. 35
Properly Scoping the Search	p. 37
Identifying Subject Features: Problem-Solution Approach	p. 37
Generating Keywords	p. 39
Selecting Classification Areas	p. 41
U.S. Patent Classification (USPC) System	p. 41
USPC Index (www.uspto.gov/web/patents/classification/uspcindex/indextouspc.htm)	p. 42
USPC Keyword Search (www.uspto.gov/web/patents/classification/)	p. 42
Reviewing Closely Related Patents	p. 43
Finding Subclasses with the Help of a Patent Examiner	p. 45
IPC (International Patent Classification)	p. 46
ECLA (European Patent Office Classification)	p. 47
FI/F-Term	p. 47
Preparing Initial Text Queries	p. 47
Conducting the Search	p. 51
Evaluating Patent Documents	p. 52
The Sections of a Patent and Their Usefulness in Patent Searching	p. 52
Titles	p. 52
Abstracts	p. 52
Descriptions of the Invention	p. 53
Claims	p. 53
Drawings	p. 53
Determining Relevancy According to the Invention Subject Features	p. 53
Evaluating Patent Documents in Different Search Types	p. 60
Patentability and Validity as Applied to 35 United States Code (USC) [section] 102 and 103	p. 60
Identifying the Subject Features for a Patentability Search	p. 60
Identifying the Subject Features for a Validity Search	p. 60
Identifying the Subject Features for an Infringement Search	p. 62
Identifying the Subject Features for a Clearance or Freedom to Operate Search	p. 62
Classification Searching	p. 63
Core Classification Searching	p. 64
Peripheral Classification Searching	p. 66
Discrepancies in the U.S. Patent Classification System	p. 67
Full- Text Searching	p. 68
Citation Searching	p. 72
Backward Citation Searching	p. 73
Forward Citation Searching	p. 73
Searching Foreign Patent Documents	p. 74
Paris Convention for the Protection of International Property	p. 75
The European Patent Organization	p. 76
World Intellectual Property Organization (WIPO)	p. 77
Patent Cooperation Treaty (PCT)	p. 77
National Authorities	p. 78
Searching Full-Text Major Foreign Patent Documents	p. 79
Keywords in Foreign Languages and Simple Translations	p. 79
Using Machine Translators to Assess Foreign Art	p. 80
Searching Abstract-Only Databases	p. 81
Value-Added Tools	p. 82
Derwent World Patent Index (DWPI)	p. 82
Searching Nonpatent Literature (NPL)	p. 82
Issues Peculiar to Certain Technical Disciplines	p. 84
Biotechnology	p. 84
Biosis	p. 87
Biotechabs/Biotechds	p. 87
Chemical Abstracts	p. 88
Cab Abstracts	p. 88
Chemical	p. 88
Business Methods	p. 90
Computer, Software, and Electronics	p. 92
Mechanical Engineering	p. 105
Estimating Search Time	p. 106
Patent Analysis	p. 109
The Precursor to Patent Analysis	p. 109
Searches versus Analyses: What's the Difference?	p. 110
Features of Patent Analyses and Reporting	p. 112
Establish Clear Objectives	p. 112
The Importance of the Data	p. 112
The Trouble with Shortcuts	p. 113
Capturing the Data Set	p. 114
Processing the Results	p. 115
Displaying Results	p. 116
Sample Patent Analysis Report	p. 117
Approaches to Reporting Search Results	p. 127
Purpose of the Search Report	p. 128
Anatomy of a Search Report	p. 129
Writing a Summary	p. 129
Presenting the Subject Matter	p. 130
Discussing References	p. 132
Writing Discussions	p. 134
Example: Hamster Health Spa	p. 135
Indicating Claims	p. 136
Prioritizing References	p. 137
Central References	p. 138
Peripheral References	p. 139
Central and Peripheral References	p. 140
Search History	p. 141
Classification Areas	p. 142
Databases Accessed	p. 143
Examiners Contacted	p. 143
Conclusion	p. 143
Search Tools	p. 145
The Availability of Patent Information	p. 145
Criteria for Selecting Search Tools	p. 146
Data Coverage	p. 147
Document Delivery	p. 147
Import and Export Functions	p. 148
Pricing	p. 148
Usability	p. 149
Company Strength	p. 149
When to Select a Search Tool	p. 150
Breadth and Depth of Data Coverage	p. 151
Data Sources for Chemical Searches	p. 151
Data Sources for Mechanical Searches	p. 154
Data Sources For Electrical/Computer Searches	p. 156
Patent Data Sources for Electrical and Computer Searches	p. 156
NPL Sources for Electrical Searches	p. 156
Data Sources for Business Methods Searches	p. 157
Methods of Access	p. 159
Text Search Syntax	p. 159
Discussion of Specific Search Tools	p. 160
USPTO Search Room	p. 160
U.S. Patent and Trademark Depository Libraries (PTDL)	p. 161
Micropatent Patent Web	p. 161
Examiner Assisted Search Tool (EAST)	p. 164
Thomson Delphion	p. 166
Questel-Orbit	p. 167
PatAnalyst	p. 167
Minesoft PatBase	p. 169
Access to Nonpatent Literature	p. 170
The Internet	p. 173
The Internet Needs a Skilled Searcher	p. 175
Meta-Search Engines	p. 175
DialogWeb	p. 175
IP.com	p. 176
IEEE Xplore	p. 176
NCBI	p. 177
Searching Journals	p. 177
Conference Proceedings	p. 178
Newspapers, Magazines, and Catalogues	p. 179
Value-Added Capabilities of Search Tools	p. 179
Alerting	p. 179
Search History	p. 179
Information and Image Importing and Exporting	p. 180
Legal Status, Maintenance Fees, and Prosecution	p. 181
Costs	p. 181
Visualization	p. 181
Conclusion	p. 182
Index	p. 183
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