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  • Wisconsin Lawyer
    March
    31
    2008

    Practice Tips: Patent Sites for the Occasional User

    Genevieve Zook

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    There are many reasons why a lawyer would occasionally want to conduct patent research: to follow trends and patterns in key technology, to help a client test a business environment, to learn about corporate competition, or even to evaluate a job applicant. These tips help the occasional user locate patents online.

    Wisconsin LawyerWisconsin Lawyer
    Vol. 78, No. 9, September 2005

    Patent Sites for the Occasional User

    There are many reasons why a lawyer would occasionally want to conduct patent research: to follow trends and patterns in key technology, to help a client test a business environment, to learn about corporate competition, or even to evaluate a job applicant. These tips help the occasional user locate patents online.

    by Genevieve Zook

    The availability of patent databases on the Internet has made the task of locating patents easier for the occasional user. Patent databases on the Web have grown increasingly sophisticated while providing improved access to information. They also have improved their indexing and expanded their coverage. For a simple search for patent information the free services provided on the Web work well. Not only are these services good enough - sometimes the information they provide is more complete1 than the information provided by fee-based resources.

    Genevieve ZookGenevieve Zook is the reference librarian at the U.W. Law Library and a member of the Law Librarians Association of Wisconsin, sponsor of this series of articles. She may be contacted at edu zook wisc wisc zook edu.

    Fee-based patent services typically provide advanced indexing, greater flexibility in keyword searching, and convenient document delivery (for example, delivering a file wrapper to your email or allowing you to obtain patents from a Web browser). Another benefit of fee-based services is the availability of researchers who can help you locate information in their databases, saving you time and occasionally even money. Most fee-based sites provide training and staff experts to assist their clients in learning how to navigate the databases. An advantage of asking these researchers for help in navigating an unfamiliar database is that they provide point-of-need training. Another advantage is that most help desks have multiple staff. If you don't get the information you need with your first call, you can call again. You'll likely get a different researcher with a different research approach.

    Basic Facts about a United States Patent

    A United States patent is a contract between the government and the inventor to protect the individual's control of an invention for a certain length of time for the economic benefit of the inventor and to promote innovation in society. For a patent to be granted, an invention must meet three criteria: it must have novelty, it must have utility,2 and it must be nonobvious to an individual of ordinary skill in the field.3

    Three types of patents are available: utility, design, and plant patents. Utility patents, which make up the largest group of patent types, are subdivided into mechanical, electrical, and chemical categories.4 Utility patents are granted for 20 years.5 Design patents, which cover the ornamental aspects of a design, have 14-year terms.6 Plant patents, which cover new strains of asexually producing plants, also have 20-year terms.

    Basic parts of the patent include the identification of the inventors, the filing date, the title, an abstract, background, a summary, a brief description of the drawing, a detailed description, and the claim or claims.7

    Why Research Patents?

    Thanks in large part to the availability of online resources, the use of patent research has expanded over the years. Traditionally, patent research was the field of inventors, patent attorneys, and patent search experts, but patent research increased as other professions became aware of the value of a patent search.8 The technical information found in a patent has become a vital part of the business environment. Patent searches are used in a variety of ways in business, from listing patents as part of the assets or inventory of a company to competitive intelligence (CI). Competitive intelligence is gathering information about a business environment, usually to develop a business strategy in a particular market. A component of competitive intelligence is viewing and comparing the types and number of patents kept by companies within an industry. Patents also are used to study the trends and patterns in a key technology.9

    Patent information may be used to help evaluate a potential job applicant; for example, a patent search can reveal an applicant's contributions to a technology. Lastly, patent research is used in fields of academic study, even in such nontechnical fields as social science; for example, studying granted patents in a geographical area to evaluate information about the political or social conditions of the time.

    Simple Searching

    If you have the patent number, viewing a patent or downloading a copy of a patent from a Web site is easy. Some patent sites only offer the ability to locate patents by number, while other sites provide keyword and field searching features. A field search is one that targets a patent's searchable fields (for example, an inventor's name) to locate hits in those specified fields. To view a list of these fields, see the United States Patent and Trademark Office Web site at www.uspto.gov.

    A word of caution. If you have experience searching in other types of Internet databases, you should be able to search for patents online. But, although these simple searches get results, they probably will not be the complete results that a professional researcher can obtain.10 There is concern among the patent research community that novice patent researchers may not recognize they are at a preliminary stage of a project when searching for patents, may not understand the flaws inherent in keyword searching, or may draw the wrong conclusions from their research. Any novice researcher who assumes Google is the best tool for Internet research runs the risk of missing information or obtaining incorrect or out-of-date information. Despite the advances in patent research databases, exhaustive patent research still requires the services of a professional. For example, to perform a novelty search or to analyze patent information takes the skill of an experienced patent researcher or patent attorney.

    Tips for More Advanced Searching

    Patent Depository Libraries in Wisconsin

    If you are attempting to do more than a simple patent search, such as an initial novelty search to see if an invention is worth the expense of obtaining a patent, I recommend a visit to a local U.S. Patent Depository Library (PTLD). The patent librarians there can provide advice on how to best use the services available to the public, and each library's Web site provides useful articles and links to patent information accessible on the Web. These libraries also collect books that are written with the novice inventor in mind. But remember that this initial trip is the beginning of your research.

    • Kurt F. Wendt Library, the Engineering Library, is on the U.W.-Madison campus, at 215 N. Randall Ave. The Kurt F. Wendt Library is a Patent Depository Library for the United States Patent and Trademark Office. Information on how to research patents is provided at the library's home page. Patents and the patent reference area are located on the third floor of the library. The library also offers a fee-based search service for patent research.
    • Wisconsin TechSearch. The Kurt F. Wendt Library provides a fee-based search service that can be contacted at (608) 262-5917. To learn more about this and other services at the Kurt F. Wendt Library, visit www.wisc.edu/wendt/patent/pserv.html.
    • The Milwaukee Public Library, 814 W. Wisconsin Ave., Milwaukee, has a Web site at www.mpl.org that offers a variety of links and articles on how to research patents. For more information, select Get Reference Help from the home page and then select Patents & Trademarks.

    It is important to note that no single database includes every patent. Also, many older patents cannot be searched by keyword, so always check coverage dates before performing a search. If you are using a database that includes patents from across several databases (many services include both U.S. patents and foreign patents) always check to see what each database includes.

    When searching for foreign patents, be aware that there is plenty to miss if you can only search for patents in English. Don't assume there will always be a full-text English translation of a patent. An abstract in English of a foreign patent may be all that is provided in the database you have selected. Many foreign patents are not written in English and therefore will not be keyword searchable in English.

    Be cautious when structuring a keyword search. Although keyword full-text searching has provided a useful way of searching for information online, this type of search must be considered an entry-level search in the context of patent research because a disadvantage to keyword searching in full-text patent databases is that a researcher must try to think of every word that may be used to describe an invention. Terms that appear obvious to you may not be obvious to others, and the common name of an invention may never be provided within the text of the patent.11

    The patent community does provide manuals for locating additional terms, and many sites now provide links to these manuals. However, using the terms in these manuals successfully takes experience. Seek an expert in the field if you want to take full advantage of the vocabulary features in a patent classification manual.

    Some databases provide controlled vocabulary features for their users. For example, STN Express and Dialog contain thesauri.12 A controlled vocabulary is an index of authorized terms used in databases in searchable fields. The patent database vendors usually have staff experts who can explain how to use these features.

    Caution. Even if you have chosen the correct terms to use to search for a specific type of patent, you can miss information if you are unfamiliar with how to construct the search within a particular database. Read the tutorials and check for help functions at the site before getting started. Although this may seem obvious, use the service number the patent vendor provides for help: you will learn more about the database in general, and the researcher on the phone will give helpful "insider" tips on how to find information faster and with a more accurate "hit" strategy.

    Online Tutorials

    To learn more about how to perform a basic patent search, seek out one of the patent tutorials available on the Web. A few resources and links are provided at the end of this article.

    Free Searching on the Web

    United States. You can begin your patent research at the United States Patent and Trademark Office, at www.uspto.gov. The United States Patent and Trademark Office (USPTO) provides three databases; a full-text database, a full-page image database, and a published application database. Patents can be searched in a variety of ways on the USPTO databases. Keyword searching and field searching are available in the full-text database. Keyword searching allows you to construct a search using a word or combination of words. Field searching, searching the parts of a patent, allows you to search in the individual fields found in the document, such as the patent number or the inventor's name. To view the field codes and see examples of how to construct a field search, link to the USPTO help guide "Help on the Manual Search Page." The help function at this site has several articles and guides and a frequently asked questions section. Coverage in the full-text database dates from 1976 to the present.

    The full-page image database contains the front page, drawings, specifications, claims, certificates of corrections, and reexaminations for each patent included. These patents are not searchable in full text. Patents download in a tagged image file format (TIFF). A TIFF plug-in also is available for download at the Web site. Patents in TIFF are available for downloading one page at a time. Coverage in the full-image database dates from 1790 to the present. A hyperlink to images is available at the top button of the menu in the Full Text document display.

    The USPTO Web site also allows users to view patent applications and to check if patent maintenance fees have been filed. A patent maintenance fee must be paid to maintain the patent in force.

    British Library. The British Library is the national library of the United Kingdom and offers a wealth of links to patent information, with an emphasis on European links. This site links to free and fee-based services, at www.bl.uk/collections/patents.html.

    European Patent Office. Espacenet, which is provided by the European Patent Office (EPO), offers searching for patents at the EPO and the World Intellectual Property Office, as well as searching for Japanese patents and patents in selected other countries. Espacenet provides PDF copies of patents, keyword searching, and a family lookup feature using the INternational PAtent DOcumentation Center (INPADOC), so you can check where else in the world a patent is filed. The free INPADOC database through the EPO Espacenet may not yield results as complete as those from a commercial service.13

    To locate members of the European Patent Office, see the lists provided at www.european patent office.org/online/links/.

    Japanese Patent Office. Japanese patent abstracts offered in English.

    The World Intellectual Property Office (WIPO) is provided by the United Nations. WIPO is responsible for protecting intellectual property throughout the world. It maintains information on patents, tracks emerging patent issues, and provides additional resources.

    A Word About Lexis and Westlaw

    Both Westlaw and Lexis provide patent information. Thomson Corporation, which owns West Publishing, purchased Dialog several years ago and expanded its patent and technical resources through that purchase. Lexis also has several patent and patent literature databases. Both Lexis and Westlaw offer patent retrieval and document delivery services, but those services are outside a standard contract.

    If you have a contract with either Lexis or Westlaw, then searching these databases may be a good way to begin your research. You can use their patent databases to search both patents and patent literature. For example, with just a name, you can search the patent databases to locate references to an expert in a specific area of technology.

    Lexis provides a Patent Law Library. To search U.S. patents in full text, use LEXPAT, the Patent and Trademark Office Library, which provides access to the full text of U.S. patents from 1971 to the present. Access to the full text of foreign patents also is available. However, coverage of foreign patents varies, so check within the information section for dates of coverage by selecting the small (i) next to the name of the database.

    Westlaw offers a variety of databases for researching U.S. and foreign patents. To search patents in Westlaw, select the directory at the top of the menu, and choose topical practice areas. Patent databases are located in the intellectual property folder. To search U.S. patents, use United States Patent Materials (US-PAT-ALL), which includes granted patents, patent applications, and patent assignments. Coverage for granted patents begins in 1976, coverage for patent applications begins in March 2001, and coverage for patent assignments begins in 1980. If you select a Dialog database in Westlaw, please note that the cost for using the Dialog database is usually outside the standard Westlaw contract.

    Other Free and Fee-based Patent Web Sites14

    • Free Patents Online provides full-text coverage dating from 1974 to the present. The full-text database permits keyword searching. The database uses the same search fields as the USPTO. The codes for the fields are provided at the bottom of the advanced search site; read the guide from the USPTO Web site on field searching for examples. TIFF or PDF copies of patents can be downloaded from this service for free. TIFF copies are downloaded one page at a time.

    • Delphion Intellectual Property Network 15 began as a free patent search service provided by IBM but has since become a fee-based patent service and is now part of Thomson Corporation. With free registration, Delphion.com offers simple searches for U.S. patents, patent number searching for worldwide collections, and free work files. For a fee, these files can be sent to you in either PDF or TIFF.

    • Patent Café offers both fee-based and free information on patents. While at this site, try the Open Source Software (OSS) Patent Search Engine, through PatentCafe. According to Webopedia.com, "open source, refers to a program source code that is free to the general public for use and/or modification from its original design."

    • Micropatent is a very large database. Micropatent also offers file wrappers (file histories of patents) that can be searched by patent number for free.

    • Mayall's IP Links has a wealth of links to intellectual property material. This patent link also reviews free patent download sites.

    • Questel Orbit Intellectual Property Group,16 provides full-text coverage of U.S. and European patents dating back to the 1970s.

    Obtaining Copies of Patents

    The following services provide copies of patents.

    • Patent Fetcher by Patent Logistics LLC offers free copies of both European and U.S. patents in PDF if you have the patent number. The service limits how many patents you can download in a 24-hour period. See the note of explanation at its Web site.

    • Get the Patent is a fee-based patent service that offers a free 14-day trial with registration.

    • PAT2PDF offers some U.S. and European patents for free and others as part of a Web-based subscription service. Patent documents with a patent number below 1,000,000 are accessible for free. For free PDF copies of patents, visit http://www.pat2pdf.org.

    • The Patent Hunter offers a free trial to download software and a variety of packages for a subscription service.

    • Google also helps you to locate patents. Just type the patent number in the menu box and Google will link you to the United States Patent Office site.

    • PatentMatic covers U.S., World (WO), European (EU), and Japanese patents. This service links to download PDF copies.

    Technology Databases

    Technology databases, such as those listed below, also can be good sources of patent information.

    • Software Patent Institute. This specialized patent service offers free searching. To obtain copies of the patents, you must register and pay a fee.

    • STN on the Web is a large database with specialized databases for technical and information services for the science community. STN is considered by patent searchers to be an excellent database to search for chemical and biotechnology patent and nonpatent information.

    • Dialog, at www.Dialog.com, provides a wealth of patent and technical information and is easier to use than other technical databases for the novice patent searcher. Learn more about the products available at Dialog.

    Programs and Plug-Ins

    Many free and fee-based services require you to download a plug-in or program to download material from their site. See The Invent Blog's site for a list of programs and plug-ins, at http://nip.blogs.com.

    List of Patent Web Site Links

    View a list of patent sites and their coverage, both free and fee-based.17 This service provides links to both U.S. and international patents.

    Online Tutorials

    Many science and engineering libraries offer online tutorials and patent resource links. Examples include the following:

    The Patent Bloggers

    If you are interested in what is being discussed by intellectual property (IP) attorneys, you can seek out patent bloggers. Many lawyers use Weblogs to provide information on their fields of interest. These bloggers often link to commercial and government IP sites as well as to each other, so once you begin to visit them you will be able to judge for yourself which sites are popular and useful. Some interesting sites include:

    Conclusion

    The availability of patent databases on the Internet has brought patent searching to the occasional searcher who wants a copy of a patent, needs the name of the author of an invention, or wants to know more about a business by searching its patents. Although no patent database search by a novice can equal the skill brought to a search by a patent expert, your occasional patent search efforts will provide you with useful information in a reasonable time for a modest cost.

    Endnotes

    1Richard Poynder, Vicious Circle, Information Today, May 2004, at 24.

    235 U.S.C. § 102.

    335 U.S.C. § 103.

    435 U.S.C. § 101.

    535 U.S.C. § 154.

    635 U.S.C. § 173.

    7Adele Hoskin, Patents for the Sporadic Searcher, 19 Ind. Libr. 1, at 31-37 (2000).

    8John T. Butler, Electronic Resources for Patent Searching, 84 Law Libr. J. 121 (Winter 1992).

    9Donna Hopkins, Using Patents to Plot Business Trends, DttP at 10-13 (Fall/Winter 2002).

    10Stephen Adams, Patent Information Has Arrived: The Message from the EPIDOS Annual Conference 2002, Online, March/April 2003, at 18-20.

    11Jackie C. Shane, Patent and Trademark Searching on the Web: Some Cautionary Advice, 18 Sci. & Tech. Libr. 4, at 83-91 (2000).

    12Email from Esther E. Koblenz, Head DCO Librarian, Kenyon & Kenyon, to Genevieve Zook, Reference Librarian, U.W. Law Library (July 28, 2005, 03:48 CST) (on file with author).

    13Zimmerman's Research Guide: Patents - U.S. (2005). Zimmerman's Research Guides are available online through LexisNexis InfoPro for Legal Information Professionals .

    14Robert J. Ambrogi, The Best (and Worst) Legal Sites on the Web 101-20 (ALM Pub., 2d ed. 2004). Ambrogi also has written several articles on this topic.

    15Richard Poynder, A Look at Delphion After 5 Years, Info. Today (Jan. 2002).

    16Nancy Lambert, Qpat Revisited: A Newly Revamped Internet Patent Resource, Searcher, Feb. 2002, at 70-72.

    17Robert J. Ambrogi, Sites for IP Practitioners Abound on the Web: Government and Private Sites Provide Global Data on Patents and Trademarks, Nat'l L.J., March 22, 2004, at S3.