Patent Searching E-Book

• Herausgeber: John Wiley & Sons
• Kategorie: Fachliteratur
• Sprache: Englisch

Seitenzahl: 298

Veröffentlichungsjahr: 2012

Beschreibung

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.

Leseprobe

Contents

About the Editors

About Landon IP, Inc.

Acknowledgments

Preface

CHapter 1: Patent Law and Examination as Context for Patent Searching

The U.S. Patent System

Look before You Leap: Considerations before Filing

Patent Examination Process

Backlog of Patent Applications

Notes

Chapter 2: Types of Patent Searches

Patentability

Validity

Infringement

Clearance

State of the Art

Patent Landscape

Benefits of Prior Art Searching

Notes

Chapter 3: The Mechanics of Searching

Introduction

Properly Scoping the Search

Conducting the Search

Issues Peculiar to Certain Technical Disciplines

Estimating Search Time

Notes

Chapter 4: Patent Analysis

The Precursor to Patent Analysis

Searches versus Analyses: What’s the Difference?

Features of Patent Analyses and Reporting

Sample Patent Analysis Report

Abstract

Inventor(s)

Chapter 5: Approaches to Reporting Search Results

Purpose of the Search Report

Anatomy of a Search Report

Writing a Summary

Presenting the Subject Matter

Discussing References

Writing Discussions

Indicating Claims

Prioritizing References

Central References

Peripheral References

Central and Peripheral References

Search History

Classification Areas

Databases Accessed

Examiners Contacted

Conclusion

Notes

Chapter 6: Search Tools

The Availability of Patent Information

Criteria for Selecting Search Tools

When to Select a Search Tool

Data Sources for Chemical Searches

Data Sources for Mechanical Searches

Data Sources for Electrical/Computer Searches

Data Sources for Business Methods Searches

Methods of Access

Text Search Syntax

Discussion of Specific Search Tools

Access to Nonpatent Literature

Value-Added Capabilities of Search Tools

Conclusion

Notes

Index

Copyright © 2007 by John Wiley & Sons, Inc. All rights reserved.

Published by John Wiley & Sons, Inc., Hoboken, New Jersey.

Published simultaneously in Canada.

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Limit of Liability/Disclaimer of Warranty: While the publisher and author have used their best efforts in preparing this book, they make no representations or warranties with respect to the accuracy or completeness of the contents of this book and specifically disclaim any implied warranties of merchantability or fitness for a particular purpose. No warranty may be created or extended by sales representatives or written sales materials. The advice and strategies contained herein may not be suitable for your situation. You should consult with a professional where appropriate. Neither the publisher nor author shall be liable for any loss of profit or any other commercial damages, including but not limited to special, incidental, consequential, or other damages.

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Library of Congress Cataloging-in-Publication Data:

Hunt, David.

Patent searching : tools & techniques /David Hunt.

p. cm.

Includes index.

ISBN: 978-0-471-78379-4 (cloth : alk. paper)

1. Patent searching. 2. Patent literature. I. Title. II. Title: Patent searching tools and techniques.

T210.H86 2007

025.06'608

2006030758

About the Editors

David Hunt is the CEO and owner of Landon IP, Inc. He holds a BA and an MBA from the College of William & Mary and has worked as a senior manager in corporate strategy, market research, and competitive intelligence at the Federal Home Loan Mortgage Corporation (Freddie Mac) in McLean, Virginia. Mr. Hunt has served as a project manager at large and small companies in the information technology areas. He has considerable experience in operations management. Mr. Hunt is a member of PIUG and PATMG, which are the professional patent information users groups in the United States and England. He is a member of the International Trademark Association (INTA) as well as the Society for Competitive Intelligence Professionals (SCIP).

Long B. Nguyen is the director of patent search quality for Landon IP, Inc. He holds an MS in engineering management from George Washington University, and a BS in mechanical engineering and a BA in economics from Syracuse University. Mr. Nguyen is a registered patent agent (No. 56,138) with several years of experience in patent prosecution at the United States Patent and Trademark Office (USPTO). While at the USPTO as a patent examiner, he examined technologies that included traction devices, wheels and axles, and tire inflation systems. Mr. Nguyen also has experience in business methods.

Matthew Rodgers is the vice president of the Patent Search Group for Landon IP, Inc. He holds a BS in mechanical engineering from the University of Texas at Austin. Mr. Rodgers has conducted research in semiconductor heat treatment and selective laser sintering. Additionally, he possesses significant experience in the analysis of metallurgical failure. Prior to joining Landon IP, Mr. Rodgers worked for several years as a patent examiner at the USPTO and as a technical specialist who conducted patent searches at other commercial patent search firms. He is a regular faculty member of the leading patent law training company, Patent Resources Group, Inc., of Charlottesville, Virginia.

About Landon IP, Inc.

Landon IP has a long and rich history in the retrieval and analysis of patent and trademark information dating back to 1949. The current company is the consolidation of four separate firms: Cantwell & Paxton (founded in 1949), Betty Byrd Inc. (founded in 1960), Landon & Stark Associates (founded in 1986), and Myra Hunter & Company.

Landon IP conducts professional patent searches for the legal and business communities. The company also analyzes patents and scientific articles, conducts technical intelligence, and consults to corporations and law firms worldwide. Landon IP’s information group sells patents, file histories, and other documents on paper and in electronic formats.

The company’s primary services include:

Patent searches that are commissioned by patent attorneys as they counsel clients on patentability, infringement, freedom to operate, state of the art, and validity.

Complex patent analysis to support research and development, patent valuations, and better licensing decisions.

Comprehensive federal, state, and common-law trademark searches that identify trademark opportunities in the United States and abroad.

Patent file histories that are available on paper and electronically by e-mail, CD-ROM, and on the Web.

Technical translations that are conducted by language and technical specialists with expertise in all major languages and all technical areas.

Patent application drafting on behalf of companies and law firms in the electrical, mechanical, and biotechnology fields. The company’s patent agents do not prosecute applications, but support research scientists and attorneys with professionally drafted invention disclosures, applications, and amendments on a project basis.

Landon IP is one of only two companies awarded the Patent Cooperation Treaty (PCT) patent search pilot contract by the U.S. Patent & Trademark Office (USPTO) in 2005. Landon IP successfully conducted PCT searches for the USPTO in the mechanical, electrical communications, and medical device fields. In 2006, the USPTO awarded Landon IP with a five-year contract to search (PCT) applications in the mechanical, electrical communications, medical device (a.k.a. life sciences), and physical sciences fields.

Acknowledgments

The editors wish to thank the distinguished individuals from both Landon IP, Inc. and Patent Resources Group, Inc. who contributed to this text. This work truly was a team effort and would not have been possible without their efforts.

The opening chapter was written by Sally Sakelaris and Bill Bohlayer, two extraordinary patent information scientists who both specialize in biochemistry. Sally is the Director of Patent Analysis at Landon IP and a faculty member at Patent Resources Group. She has the added distinction of formerly serving as a patent examiner with the USPTO. Bill Bohlayer is an accomplished academic who has been published in biochemistry journals. He is a veteran patent analyst who has conducted searches for companies, patent attorneys, and the USPTO.

Chapter 2, “Types of Patent Searches,” was largely written by Matt Meyer, a PhD and team leader of the chemistry and biochemistry groups of Landon IP. Matt is the longest-serving patent analyst on staff with the company, a veteran scientific advisor, and excellent trainer.

Bill Bohlayer, Jamshid Goshtasbi, Benjamin Hitt, Matt Meyer, Blaise Mouttet, Long Nguyen, Dave Odland, Matt Rodgers, and Geoff Thomas drafted Chapter 3, “The Mechanics of Searching.” Jamshid, Blaise, and Dave are invaluable analysts in the electrical and physical sciences areas. All three are former USPTO examiners, exceptional communicators, and technical experts. Geoff Thomas is the Director of Patent Searching at Landon IP, has many years of search experience at several organizations and law firms, in a wide variety of subject areas, and was the author of the section on searching foreign patent documents. Ben Hitt and Long Nguyen are primarily mechanical and business methods analysts and both drafted significant portions of the book. Ben was the primary author of Chapter 6, “Search Tools,” and contributed to Chapter 3. Long is the director of patent search quality at Landon IP and the primary content editor for the text. As a former USPTO examiner and patent analyst, few individuals know as much about the field of searching as Long. Matt Rodgers is the vice president of the Patent Search Group at Landon IP, a former patent examiner, a former searcher at several organizations, and a veteran faculty member at Patent Resources Group. Without his leadership, this project would not have succeeded.

Robert Cantrell is a thought leader in the gathering, assessment, and communication of patent information for competitive intelligence. He is the author of several books on business strategy and a frequent contributor to intellectual property publications. Robert led the writing on Chapter 4, “Patent Analysis.” He is Director of Consulting with Landon IP and a faculty member at advanced programs held by Patent Resources Group. He is a frequent instructor at the U.S. Army War College.

Kristin Hehe is a chemist, search manager, and former patent analyst with exceptional thinking and writing skills. She teamed with Robert Cantrell in drafting Chapter 5, “Approaches to Reporting Search Results.” A patent search company cannot succeed without professional search managers who understand the discipline, assess the scope of projects quickly and accurately, and communicate well to individuals who commission the searches. Kristin handles each of those roles exceptionally well.

Ben Hitt and Sally Sakelaris drafted Chapter 6, “Search Tools.” You already know their background and contributions. We are very grateful that they readily share their knowledge, skills, and professionalism inside and outside of Landon IP.

Finally, we wish to thank Laurie Baber, Debi Dandridge, and Susan Mathis at Patent Resources Group in Charlottesville, Virginia. Laurie is a professional librarian and provided exceptional support with the facts and diagrams in the text. Debi edited the text for both content and style. Her suggestions were thorough and incorporated in the final manuscript. As with every staff member at Patent Resources Group, Debi is a consummate professional. Susan is an exceptional technical editor, among her other duties. Thank you all.

We hope that you will enjoy reading and referring to the content in this text. As is everything in life, we view the book as a continual work in progress and welcome any suggestions as we improve on these concepts and tools in the future.

David Hunt, CEO

Matt Rodgers, Vice President

Patent Search Group

Long Nguyen, Director

Patent Search Quality

January 1, 2007

Landon IP, Inc.

Alexandria, Virginia USA

Preface

This book on patent searching is the result of a journey. Several years ago, Landon IP was approached by many of our patent attorney customers and asked to conduct prior art searches. Unfortunately, we did not employ any patent searchers, nor did we conduct searches. We were a company that specialized in providing patent information to attorneys and agents since 1949. Patent information, not patent searching, was our business. However, we were determined to learn as much about searching as possible.

My background is in business management. I am not qualified to conduct a patent search. I have an MBA, which means that I can do anything with the help of others and nothing by myself. The fact that I was not a patent searcher told me that I needed to find experts.

So, the company began hiring some very good patent searchers and soon discovered that every one of them learned how to search “on the job”; meaning at the foot of a patent attorney, a patent agent, a librarian, or by themselves. This seemed unusual to us if only because we presumed that so much of the quality and enforceability of a patent depended on the initial patentability search. After all, how many times have you heard the expression “garbage in, garbage out”? Certainly there were many accomplished patent attorneys and exceptional patented technologies. Thousands of attorneys and agents were (and still are) registered to practice before the U.S. Patent and Trademark Office (USPTO) and other patent authorities for that matter. Was there a formal training program for patent searching anywhere?

Well, we quickly learned that no formal search program existed beyond one in the Netherlands and at a few major companies that trained their own people. There were very few books or materials on patent searching. A text that focused more on tools than timeless principles had been written by a university librarian in Pennsylvania. The Franklin Pierce Law Center also had disseminated some materials, but not a definitive text.

As we became convinced of the need for quality materials and a training program, we contacted Professor Irving Kayton of Patent Resources Group (PRG) in Charlottesville, Virginia. Professor Kayton is a legend in the patent community and conducts highly successful patent bar review and advanced patent law education programs. We asked him whether PRG taught patent search training and, if not, whether he would consider offering such a program to train our people.

Professor Kayton concurred that quality patent searches were critical to the role of patent counsel and suggested that Landon IP organize a course under his guidance that could be taught to our employees and others. We accepted his offer and after extensive research and team effort, we produced a text for his programs. Several of our patent analysts and senior managers now teach at PRG. The text has been revised on several occasions and some of the content is included in this book. We also are happy to report that our patent search training courses at PRG are well attended and very successful.

We do not believe that our efforts have resulted in the definitive text on the topic. However, it remains our goal. We believe this book is a first big step, and we intend to revise it over time so that you, we, and others can benefit from a text that should have been written years ago.

Our goal is to provide you with approaches to patent searching that will be of benefit to you regardless of your technical expertise or role in the intellectual property community. Its focus is on principles and approaches and not on specific tools. Several database providers have effective search tools that we discuss in general. All of those companies will teach you how to use their software and services, and usually at no charge. Instead, this text is meant to teach you the art and science of patent searching regardless of the tools you use. We do offer criteria on how to select the appropriate search tools and even provide current information on the major databases.

We welcome any comments that you have on how we can continue to improve upon our efforts. Please contact me directly if you have any constructive advice to offer.

Thank you and best regards,

David Hunt, CEO

Landon IP, Inc.

[email protected]

January 1, 2007

Alexandria, Virginia USA

Chapter 1

Patent Law and Examination as Context for Patent Searching

“If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it.”

—Thomas Jefferson, Letter to Isaac McPherson, Monticello, August 13, 1813

In hindsight, the third president of the United States and the driving force behind the establishment of America’s first patent laws in 1790 was ahead of his time. Jefferson lived when a subject matter like biotechnology was known only vaguely; maybe through a farmer’s knowledge of crop rotation, the use of manure, and the need for better soil preparation. Yet, the laws that he helped create still govern the practices of our present-day patent system and are able to encompass far-reaching technologies. Without knowing what the future held for intellectual property (IP), Jefferson crafted patent laws that continue to accommodate the review and prosecution of a myriad of technical subject matters.