DATE: March 1998
INTERNATIONAL FEDERATION OF WORLD INTELLECTUAL
INVENTORS’ ASSOCIATIONS PROPERTY ORGANIZATION
WIPO-IFIA INTERNATIONAL SYMPOSIUM ON INVENTORS AND
jointly organized by
the World Intellectual Property Organization (WIPO)
the International Federation of Inventors’ Associations (IFIA)
with the cooperation of
the Association of Hungarian Inventors
Hungarian Patent Office
Budapest, March 16 to 19, 1998
USE OF THE STATE-OF-THE ART SEARCHES IN INVENTIVE AND INNOVATIVE
Document prepared by Mrs. Judit Hajdú and Mrs. Zsuza Töröcsik, Hungarian Patent Office,
ABLE OF CONTENTS T
Paragraphs INTRODUCTION 1 to 6
PATENTABILITY SEARCHES 7 to 10
STATE-OF-THE-ART SEARCHES 11 to 14
CONTINUING SEARCHES 15
INFRINGEMENT SEARCHES 16
VALIDITY SEARCHES 17 to 20
RIGHT-TO-MAKE SEARCH 21 to 23
INFORMATION SOURCES 24 to 3
FREE ACCESS SITES ON THE WORLD WIDE WEB 36
PUBLICATIONS 37 to 38
PROVIDING PATENT INFORMATION TO THE PUBLIC IN HUNGARY 39 to 47
1 In considering the steps to take in developing and launching a new product, the key element for success is information:
？;on the state of the art,
？;the strength of competitors` intellectual property rights and
？;establishing your own proprietary intellectual property rights for the new product.
2 Information on these issues is essential not only
？;for the inventors in relation to patent, trade mark and design protection; but also
？;for the R&D and marketing personnel of a company involved in developing and
launching the product.
3 Intellectual property information helps you:
？;avoid “reinventing the wheel”;
？;learn about emerging technologies before they appear in the scientific and technical
literature and the market place;
？;enhance the prospects for obtaining effective patent, trade mark and design
？;avoid unnecessary expense on unsuccessful patent, trade mark and design
？;monitor competitors` new product developments;
？;obtain information about competitors` businesses; and
？;anticipate and avoid conflict with competitors` intellectual property rights.
4 There are several stages in the innovation process at which the available literature should be searched. The first stage is before the beginning of any research programme. The second is the point at which an invention might have been made, and the third is the point at which commercialisation is being considered. The first two stages will involve searching any literature which seems appropriate: patents and academic literature, in any form and in any country and language. The third stage is quite different and involves patent infringement or “freedom to use” searching.
5 We could think that “search is search”, and it is true, that basically search is all the same in the sense that searchers are trying to find closely related documents. However, to make it effective, the ways of approach must be different from each other according to the aims of search. Searches can be classified, according to their aims, as follows:
6 This type of search is the easiest and the quickest because the searcher already has a patent number or an inventor’s name. The point of this type of search is to find out what was covered by a specific patent number or to find out what patents a particular inventor has to his
or her credit. Bibliographic searches can be done as a part of historical, biographical, or product research.
ATENTABILITY SEARCHES P
7 The Patentability Search is directed to an entirely different goal. In a Patentability Search, the searcher attempts to determine whether there are previous patents or printed publication (prior art) that might prevent the searcher from patenting his idea. While Patentability Searches can be performed early in the development of an invention, they are more commonly done prior to submitting a patent application. Such a type of search may turn up prior art that might be useful in preparing the application, additionally a search can help the inventor determine just how original his idea is. Another benefit can be that an inventor can often locate evidence of unobviousness by finding previous patents that recommend against their product or method as a solution.
8 Because any reference, among others any patent reference is relevant in a Patentability Search regardless of its age, and because combinations of patents must be considered, the scope of such a search increases substantially over the so called State-of-the-Art Search we will speak about this type of search a little bit later). It is recommended to search the patent file back at least 50 years, preferably more, for mechanical inventions, technological fields which are often times more recently developed may require searching more than 25 years back.
9 Compared with the so called Infringement Search, Patentability Search may not permit much time or money on it. If the invention were known as to be breakthrough, pioneer, he may invest more time and money, but, in normal situation, patentability searcher must restrict the scope of the search. In some cases Patentability Search will not performed because of economical limitation.
10 Normally, Patentability Search is performed through free sources, such as in Patent Library of Patent Offices , in state libraries or in free Internet web sites (we will mention it later). If the invention is considered a “big one”, search may exceptionally be performed through commercial online databases or CD-ROMs.
11 The State-of-the-Art Search is the broadest and the most general of all the intellectual property searches. It is essentially a market survey that should ideally include a broad brush look at everything that has been done in a given art. State-of-the-Art Search results are invaluable in many situations. To an inventor, who is contemplating entry into a particular field of art, the State-of-the-Art Search results can provide concrete evidence of the advisability of such a decision. To an inventor who is currently active in a particular field of art, the State-of-the-Art Search results can lay out the path that must be followed to design around the current art.
12 In most cases, a thorough State-of-the-Art Search can save a great deal of time and money. Knowing what work has previously been done, what problems have been discovered and how they have been solved, who is active in the field of art, and the chronological
development of their work can prevent wasteful excursions into blind alleys and unnecessary expenditures of capital.
13 The scope of the State-of-the-Art Search should be broad enough to provide a complete picture of what is out there and, at the same time, should be narrow enough to limit the information gathered to what is truly relevant. A good State-of-the-Art Search should begin at the beginning. Producing a State-of-the-Art Search that is unlimited in time should provide you with a chronological history of the field of the art. You will certainly have access to the most recent developments in the field, however, it is not less important that you also have access to earlier developments. These earlier developments may provide you with information that will be critical to your decision making process. Therefore, unless it is impossible to sufficiently narrow your search by other means, the State-of-the-Art Search should not be limited by time period.
14 As it was mentioned earlier, the scope of the State-of-the-Art Search must be broad in order to give a complete picture of what is out there. The searcher must try to generate a search that includes everything that has happened in a particular field of art. The best way to be sure of including everything is to search a broad array of sources. This includes not only searching issued patents, but also searching field of art specific publications and even transcripts of important scientific meetings where technical papers may be presented before publication.
ONTINUING SEARCHES C
15 A Continuing Search is nothing more than a current awareness search of recently issued patents. Generally these searches are of two types: keeping up with patent activity in areas of interest and keeping up with competitor’s activities.
16 Prior to launching the product it is essential to be aware that the product will not infringe competitor’s patents and designs and that the brand name selected for the product will not conflict with existing trade mark registrations. Patent and design infringement searching and trade mark searching is essential at this stage.
17 Validity Searches are generally undertaken by companies or individuals trying to determine if is possible to invalidate another`s patent. The searcher is looking for issued patents or printed publications that anticipate or make obvious another issued patent. The searcher could also be looking for earlier public use of the invention, technical errors, fraud, or anything that would cause the patent to be declared invalid. As a result, a Validity Search is done to determine if an unexpired patent is valid and enforceable.
18 A Validity Search may also suggest strategies for avoiding the infringement of existing patent rights when seeking to enter a new market, but a Validity Search could be conducted as
well when litigation concerning infringement of a patent is on the horizon, and the defendant is trying to invalidate the plaintiff’s patent.
19 Another example where a Validity Search proves useful is in licensing negotiations. In assessing the value of the licensed patent a licensee is about to receive, he may want to conduct a Validity Search to determine the strength of the patent.
20 A patent Validity Search is the most exhaustive search that can be undertaken, and often it may never end. If a corporation has a vested interest in invalidating a competitor’s patent, it may continue searching until it finds something it feels will accomplish this. Prior art exist world-wide everywhere in so many different places, that it is often impossible to be sure that you have “covered all the bases” when conducting a search. An invented technology could exist in another country, but may not be patented. It may be in a remote trade publication or journal which is hard to find. Therefore, in approaching a patent Validity Search, there is no “set” or “right” time frame with which to complete such a search, but surely one has to weigh and balance the time spent with the importance of the search.
IGHT-TO-MAKE SEARCH R
21 A Right-to-Make Search concentrates on expired patents, unlike an Infringement Search, which concentrates on unexpired patents. These searches are done to determine if another company’s process, product, or design has expired and can then be copied with impunity.
22 Before beginning any search, it is always a good idea to decide what type of search will produce the best results for the particular problem at hand. The particular problem, money, time may be the decision-making factors. The particular invention and the circumstances of the inventor will typically dictate the cost of the search. A sole inventor working in his garage on a better mouse trap will not be able to spend as much as a researcher for a large pharmaceutical company working on a cure for cancer. The cost of the search can be essentially irrelevant when someone is searching for prior art as a defendant in an infringement action. The potential damages facing defendants in such cases can be so high as to make search costs irrelevant.
23 The way in which a search is conducted depends somewhat on the goal to be achieved. The three most common types of searches are: State-of-the-Art Searches, Patentability or Novelty Searches, and Infringement Searches.
24 There are three main categories of information sources available:
25 Each of these source categories has distinct characteristics and no one category is sufficient for a good search. Rather, all categories of information sources should be considered and used for each search.
26 Patent literature represents disclosures of technologies that are proposed for commercialisation. 70 % of the information in patents is disclosed nowhere else. For example, in the United States alone over 100000 patents are granted each year. It is impossible to carry out a completely comprehensive patentability or infringement search as this would entail a search of all documents published anywhere in the world at any time.
27 While issued patents can be a very good source of current information, publications are frequently a better source of very up to date information. Searching patent and scientific literature for a disclosure can be like “ looking for a needle in a haystack” and thus cost effective techniques are essential to obtaining value from patent searching.
28 Successful searching is based on:
？;knowing what to look for,
？;knowing how to locate it.
29 In order to conduct a thorough search, it is necessary to search issued patents and published patent applications.
30 There are two main access points for searching patents:
？;the national patent offices and
？;the online services, both public and private.
Some words about public search rooms at national patent offices:
31 All national patent offices have public search rooms where you can get access to copies of issued patents. This may be a good place to do a search if you know that there is a particular class or subclass that completely describes your field of art. Patents in the public search rooms are filed by classification. Therefore, if you know what class you want to search (you determine the class you are interested in by looking it up in the International Patent Classification (IPC)) simply ask for the box containing that class and physically look through the patents contained in that box.
32 However, there are some problems with this method. First of all, the boxes are quite dirty so searching them may not be an enjoyable experience. Second, if your field of art requires that you search several classifications, the physical search may be too time consuming to be productive. Additionally, some percentage of patents may have been removed from the public search room, and there is no way to tell if patents are missing from the boxes you are searching. Finally, unless you are in the town where the national patent office is situated, this is probably not the best way to conduct a search.
And now a few words about online services:
33 There are many online services available. Several commercial vendors provide access to patent information. While these commercial services typically have very complete and up-to-date information, they are also expensive to use and require some skill to navigate. There are also patent searching resources available on the World Wide Web. There are currently no full text, free WWW searching sites, however, there are quite a few web sites that offer searching capabilities.
34 Now, we should like to give a brief summary of the available online services, both commercial and free access, and how they can be used to produce a good search.
35 There are a number of commercial vendors that offer access to patents and published patent applications. Each source has unique characteristics, and the most appropriate source for the situation should be chosen when planning a search.
；;Questel-Orbit is a commercial vendor that specialised in intellectual property information. It supplies direct access to the most comprehensive collection of patent databases accessible online. Questel-orbit provides access to subject oriented and legal oriented databases. It has approximately 40 patent databases and supports single as well as multi-file searching of up to 8 databases at one time.
Questel-Orbit has a PowerIndex which allows users to use one of sixteen pre-defined file clusters or create their own groups of up to 40 databases. PowerIndex may be searched using full boolean and proximity searches and automatically ranks database lists. Files can be searched by patent number, inventor name, assignee name, abstract, classification, key words, or any combination of them.
Its service covers over 60 countries. United States coverage is provided by QPAT database, which provides the full text for all patents issued since 1974.
International coverage is given by
？;Derwent`s World Patent Index (WPAT covering 35 countries),
？;INPADOC (INPD covering 50 countries with legal status information), and
？;European Search Documentation (EDOC covering Japanese granted patents)
all which can be accessed through Questel-Orbit.
Questel-Orbit has a very flexible search system that can be adapted to almost any type of patent searching.
；;Dialog is a commercial vendor that offers approximately 14 patent databases. These databases are searchable by patent number, inventor name, assignee name, abstract, classification, key words, or any combination of them.
Through Dialog can be accessed among others the following databases:
？;Derwent World Patents (it covers 35 patent issuing organisations world-wide), ？;CLAIMS/US Patents (covers US patents going back to 1950),
？;US Patents Fulltext (contains the best mode, invention background, and enabling
？;INPADOC (with legal status information).
Although Dialog has fewer patent specific databases than Questel-Orbit, it does provide access to many other useful publication databases, and also provides access to newspapers and magazines.
；;STN International, the Science and Technical Information Network offers a fee based online search service that provides accurate, up-to-date, specific information from over 200 scientific, technical, business, and patent databases. STN also offers a fee based WWW access to selected databases via the STN EASY service. Information is offered on a broad range of scientific fields, including engineering, material science, physics, biotechnology, pharmacology, and chemistry.
STN offers features that include advanced chemical structure searching, easy cross-searching of complementary databases and chemical reaction information.
This database would be very valuable for a State-of-the-Art searcher interested in a very technical field.
；;MicroPatent is a commercial vendor that provides a patent search and delivery service.
Their patent databases include
？;US patents (dating back to 1975),
？;European patent applications (dating back to 1978),
？;WIPO applications (dating back to 1978), and
？;unexamined Japanese patent applications (dating back to 1995).
These databases can be searched by any combination of approximately 20 different bibliographical fields including
？;US and IPC classification numbers,
？;application numbers, dates,
？;inventor location or
？;key words that appear in titles or abstracts.
This is not a full text site. All searching is done by bibliographic fields. Although this can be a good site when you know what you are looking for, it is not particularly well suited to state of art searching. However, if your field of art can be limited to a particular class, this site may provide some useful information.
；;European Patent Register is a commercial site that can be found on the World Wide Web
(http://www.epo.co.at/epo/epidos).The Register of European Patents provides detailed
information on all European and Euro-PCT patent applications.
The Register provides bibliographic data such as
？;title of the invention,
？;name and address of the applicant, inventor, attorney, and
？;the latest information about the status of the granting procedure of the patent application.
The Register is accessible in English, French and German and is updated daily. The database is limited to information on all published European patent application and PCT applications with designation of EPC Member States from first publication until grant.
This site can be searched using European application number, PCT application number, applicant’s name, international patent classification, or priority number. The search capability that is most relevant to a State-of-the-Art searcher is the international patent classification. Since European and PCT applications are published after 18 months, this is a good site for up to date information on the state-of-the-art in a particular international class. Once you have identified art references that may be of interest, this site can also provide current information on the legal status of those references.
FREE ACCESS SITES ON THE WORLD WIDE WEB
36 There are many WWW sites that provide free access to some form of patents. It is difficult to provide an exhaustive current listing of these sites because new sites are being added all the time. However, let’s have a look at some of the available free access sites and what they offer to the searchers:
？;The Aids Patent Project: (http://patents.cnidr.org/pto)
Electronic Data Systems Shadow Patent Office: (http://www.spo.eds.com)
？;Sunsite`s Patent Search: (http://sunsite.unc.edu)
Chemical Patents Plus: (http://casweb.cas.org/chempatplus)
U.S.Patent and Trademark Office: (http://email@example.com)