Patent
`Searching
`Tools &
`
`DAVID HUNT
`LONG NGUYEN
`MATTHEW RODGERS
`
`BICEHTO4NIPL
`
`W1LEYI
`200
`l_j r
`
`John Wiley Wiley & Sons, Inc.
`
`Z1E 14,13, Taf
`
`

`

`This book is printed on acid-&ee paper.
`
`Copyright © 2007 by John Wiley & Sons, Inc. All rights reserved.
`
`Published by John Wiley & Sons, inc. Hoboken, New Jersey.
`
`Published simultaneously in Canada.
`
`No part of this publication may be reproduced, stored in a retrieval system, or transmitted in
`any form or by any means, electronic, mechanical, photocopying, recording, scanning, or
`otherwise, except as pennitted under Section 107 or 108 of the 1976 United States Copyright
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`Library of Congress Cataloging-in-Publication Data:
`
`Hunt, David.
`Patent searching: tools & techniques / David Hunt.
`P. cm.
`Includes index.
`ISBNi 978-0-471-78379-4 (cloth : alit, paper)
`I. Patent searching. 2. Patent literature, I. Title. Ii. Tide: Patent searching tools
`and techniques.
`T210.H86 2007
`025,06'608
`
`2006030758
`
`10 9 8 7 6 5 4 3 2 1
`
`

`

`
`
`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
`The Benefits of Patent Protection
`Harmonization of Patent Laws
`The Paris Convention
`The Patent Cooperation Treaty
`Trade-Related Intellectual Property Rights (TRIPS)
`American Inventors Protection Act of 1999 (AIIPA)
`The Priority Date
`The U.S. Provisional Application
`Continuing Applications
`Nonprovisional Applications
`Sections of a Patent
`A Note about Reading the Specitication and the Claims
`Sections of a Patent File History
`Look before You Leap: Considerations before Filing
`Patent Examination Process
`The Job of the Patent Examiner
`The Examiner Fellows the Courts
`The Examiner follows Patent Examining Procedure
`Administrative Handling of the Patent Application
`Actual Patent Examination
`The Examiner Reviews Cited Patents and Nonpatent
`Publications
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`xi
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`xiii
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`xvii
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`Iv
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`CONTENTS
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`CHAPTER 2
`
`CHAPTER 3
`
`The Examiner Conducts an Inventor Search ("Double
`Parenting" Search)
`The Examiner Applies the References
`After Patent Grant
`Backlog of Patent Applications
`
`Types of Patent Searches
`Patentability
`What Is a Patentability Search?
`When Is a Patentability Search Needed?
`What Needs to Be Searched n a Patentability Search?
`What the Searcher Needs to Know to Search Successfully
`Validity
`What Is Validity Search?
`When Is a Validity Search Needed?
`What Needs to Be Searched in a Validity Search?
`Infringement
`What is an Infringement Search?
`When Is an ln±ngernent Search Needed?
`What Needs to Be Searched in an Infringement Search?
`Clearance
`What Is Clearance Search?
`When Is a Clearance Search Needed?
`What Needs to Be Searched in a Clearance Search?
`State of the Art
`What Is State-of-the-Art Search?
`When Is a State-of-the--Art Search Needed?
`What Needs to Be Searched in a State-of-The-Art Search?
`Patent Landscape
`What is a Patent Landscape Search?
`Benefits of Prior Art Searching
`
`The Mechanics of Searching
`Introduction
`Property Scoping the Search
`Identifring Subject Features: Problem-Solution Approach
`Generating Keywords
`Selecting Classification Areas
`U.S. Patent Classification (USPC) System
`USPC Index
`(-ww.uspto.gov/web/patents/classification/uspcindex/
`indextouspc.hmi)
`USPC Keyword Search
`(NVIVW.Uspto.gov/web/Patents/classifleation/)
`
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`CONTENTS
`
`V
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`Reviewing Closely Related Patents
`Finding Subclasses with the Help of a Patent Examiner
`IPC (International Patent Classification)
`ECLA (European Patent Office Classification)
`FL/F-Term
`Preparing Initial Text Queries
`Conducting the Search
`Evaluating Patent Documents
`The Sections of a Patent and Their Usefulness in Patent
`Searching
`Titles
`Abstracts
`Descriptions of the Invention
`Claims
`Drawings
`Determining Relevancy According to the Invention
`Subject Features
`Evaluating Patent Documents in Different Search Types
`Patentability and Validity as Applied to 35 United
`States Code (USC) § 102 and 103
`Identifying the Subject Features for a Patentability Search
`Identifying the Subject Features for a Validity Search
`Identifying the Subject Features for an Infringement
`Search
`Identifying the Subject Features for a Clearance or
`Freedom to Operate Search
`Ctassificaton Searching
`Core Classification Searching
`Peripheral Classification Searching
`Discrepancies in the U.S. Patent Classification System
`Full-Text Searching
`Citation Searching
`Backward Citation Searching
`Forward Citation Searching
`Searching Foreign Patent Documents
`Pans Convention for the Protection of tnternatjorjal
`Property
`The European Patent Organization
`World Intellectual Property Organization (WIPO)
`Patent Cooperation Treaty (PCT)
`National Authorities
`Searching Full-Text Major Foreign Patent Documents
`Keywords in Foreign Languages and Simple Translations
`Using Machine Translators to Assess Foreign Art
`Searching Abstract-Only Databases
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`V
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`CONTENTS
`
`CHAPTER 4
`
`CHAPTER 5
`
`Value-Added Tools
`Derwent World Patent Index (DWPI)
`Searching Nonpatent Literature (NPL)
`Issues Peculiar to Certain Technical Disciplines
`Biotechnology
`BIOSIS
`BIOTECHABS/BIOTECHDS
`CHEMICAL ABSTRACTS
`CAB ABSTRACTS
`Chemical
`Business Methods
`Computer, Software, and Electronics
`Mechanical Engineering
`Estimating Search Time
`
`Patent Analysis
`The Precursor to Patent Analysis
`Searches versus Analyses What's the Difference?
`Features of Patent Analyses and Reporting
`Establish Clear Objectives
`The Importance of the Data
`The Trouble with Shortcuts
`Capturing the Data Set
`Processing the Results
`Displaying Results
`Sample Patent Analysis Report
`
`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
`Example: Hamster Health Spa
`Indicating Claims
`Prioritizing References
`Central References
`Peripheral References
`Central and Peripheral References
`Search History
`Classification Areas
`Databases Accessed
`
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`c H APT p 6
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`CONTE NTS
`
`VII
`
`Examiners Contacted
`Conclusion
`
`Search Tools
`The Availability of Patent Information
`Criteria for Selecting Search Tools
`Data Coverage
`Document Delivery
`Import and Export Functions
`Pricing
`Usability
`Company Strength
`When to Select a Search Tool
`Breadth and Depth of Data Coverage
`Data Sources for Chemical Searches
`Data Sources for Mechanical Searches
`Data Sources For Electrical/Computer Searches
`Patent Data Sources for Electrical
`and Computer Searches
`NPL Sources for Electrical Searches
`Data Sources for Business Methods Searches
`Methods of Access
`Text Search Syntax
`Discussion of Specific Search Tools
`IJSPTO Search Room
`U.S. Patent and Trademark Depository Libraries (PTDL)
`Micropatent Patent Web
`&ominerAssisted Search Tool (EAST)
`Thomson Delphion
`Questel-Orbit
`PatAnalyst
`Minesoft PatBase
`Access to Nonpatent Literature
`The Internet
`The Internet Needs a Skilled Searcher
`Meta-Search Engines
`DialogWeb
`IIP.corn
`IEEE Xplore
`NCBI
`Searching Journals
`Conference Proceedings
`Newspapers, Magazines, and Catalogues
`
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`277
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`

`

`viii
`
`CONTENTS
`
`Index
`
`Value-Added Capabilities of Search Toots
`Alerting
`Search History
`Information and image Importing and Exporting
`Legal Status, Maintenance Fees, and Prosecution
`Costs
`Visualization
`Conclusion
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`183
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`

`

`bi.iuiIruH1r.yi
`
`David Hunt is the CEO and owner of Landon IP, Inc. He holds a BA
`
`and an MBA from the College of Wiffiarn & Mary and has worked as a
`senior manager in corporate strategy, market research, and competitive in-
`telligence 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 PlUG
`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 In-
`telligence 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 Washing-
`ton University, and a BS in mechanical engineering and a BA in econom-
`ics 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 Uni-
`versity of Texas at Austin. Mr. Rodgers has conducted research in semi-
`conductor heat treatment and selective laser sintering. Additionally, he
`
`ix
`
`

`

`X
`
`ABOUT THE EDI TOR S
`
`possesses significant experience in the analysis of metallurgical failure. Prior
`to joining Landon IP, Mr. Rodgers worked for several years as a patent ex-
`aminer 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.
`
`

`

`Landon IP has a long and rich history in the retrieval and analysis of
`
`patent and trademark information dating hack to 1949. The current com-
`pany is the consolidation of four separate firms: Cantwell & Paxton
`(founded in 1949), Betty Byrd Inc. (founded in 1960), Landon & Stark As-
`sociates (founded in 1986), and Myra Hunter & Company
`Landon IP conducts professional patent searches for the legal and busi-
`ness 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
`
`xi
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`

`

`Xii
`
`ABOUT LAMPON IP, INC.
`
`patent agents do not prosecute applications, but support research sci-
`entists 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 Coopera-
`tion Treaty (PCT) patent search pilot contract by the U.S. Patent & Trade-
`mark 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-
`
`