- ISBN: 9780471783794 | 047178379X
- Cover: Hardcover
- Copyright: 2/2/2007
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.
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 |
| Table of Contents provided by Ingram. All Rights Reserved. |
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