Prior Art Search- How To
Table of Contents
Overview
In light of recent court decisions regarding the patent infringement case Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd. and SMC Pneumatics Inc., commonly referred to as Festo, technology companies would be prudent to protect their core technologies by learning as much as they can about prior art. Indeed, companies must understand the patent landscape so that they can intelligently assess patentability and freedom-to-operate issues and explain them to potential investors and managers.
Unfortunately, gaining and maintaining a comprehensive knowledge of intellectual property in a particular field can be a daunting task, especially for start-up, individuals or small companies with budgetary constraints. Even established companies with in-house counsel and significant funds devoted to intellectual property may find it challenging to monitor patent publications if they practice in a “crowded” or “hot” technology area.
In view of the above, company managers and owners should consider the following:
-Conduct a search that is broad enough to ensure that no significant information is missing, without spending an inordinate amount of time and money.
-Discover what sources are needed for a search to be complete, including U.S. patents and published applications; nonpatent publications; and foreign publications.
-Upon performing an initial search, update search results efficiently and effectively to stay current with new intellectual property.
-Keep track of patent applications that have been filed but not yet published.
No search is perfect—and searches that approach perfection are often too costly and time-consuming to be practical for start-up device companies and even more-established companies. Even where significant funds are available, spending too much money and effort on the wrong search and at the wrong time can waste resources and be an unnecessary distraction.
Prior-art searches have two overarching aspects: exclusivity and freedom to operate. Exclusivity deals with executives’ own patents, trade secrets, and trademarks, and protecting their markets and ideas from competitors. Freedom-to-operate issues originate from patents and intellectual properties that belong to others. For example, if a startup or small company is about to commercially launch a new product in the United States, they had better concentrate on whether they will be free to sell the product without infringing other patents.
Types of Searches
Exclusivity searches include the following:
-”State of the Art” searches are appropriate when an executive first considers entering a field but does not know what specific technology to pursue. This type of search features a relatively low cost. It identifies examples of recent patents, published patent applications, and some journal articles.
-”Patentability” searches are often used as a filter to determine whether to proceed with the patent process. We often perform a version of this search to improve the quality of any patent they eventually obtain. Issued patents and published patent applications will often be identified.
-”Validity” searches are useful before a company acquires another patent or assert a patent of their own against a competitor who they believe to be infringing their claim.
-”Blocking Patent” searches seek to identify any broad pioneering patents with claims that cover an entire field that may block your patent. This is a search for broad competitors patents.
-”Invalidity” searches seek references that may invalidate a patent that currently exists or that a competitor is threatening to assert.
-”Clearance” searches are performed when a product design is being finalized and a commercial launch is planned.
Performing the Search
The simplest way to start a prior-art search is via the U.S. Patent and Trademark Office (PTO) website. It is fast and free. Once patents are identified, I use another site to obtain an adobe PDF copy of the patent references for download and distribution. A similar Web service, Esp@cenet, is also free and available for searching European patents. This site offers a network of patent databases, including databases for searching patents in Japan and other international locations.
Once various patents and published applications are found through free searches, these initial references may then be used to broaden the search. For example, a patent often cites other relevant patents in the field, either on the cover page or in the background section of the patent, or a particular inventor or assignee may be searched in further references.
I occasionally use the ‘for a fee’ Micropatent-Thompson and search their databases. MicroPatent permits one to sign up on a day to day basis. I can also obtain file histories through a variety of sites, many of which are listed in Intellectual Property Today, although I almost never am asked to do that. Of course all the methods described above are searches you can perform yourself.
Occasionally I use the Great Lake Patent and Trademark Center (a USPTO depository library) to access their examiner search terminals. GLPTC charges a small hourly fee for access to the terminals. Copies of references one finds in the search are free (included in the terminal fee).
If this is a technology company patent search, then you may wish to look for foreign prior art, particularly Asia. I have some links on my site at: http://hasselbeckandassociates.com/ . There are many more links that I do not list, but are well known by patent searchers. Particularly Nerac’s large set of databases helps in this area, but Nerac is a paid search service and they perform the search for you on a fee per cases basis (for law firms and patent agents in patent practice), or on a fixed price annual subscription basis for others. If you are looking at Nerac, it makes sense for you to request the search yourself, as they do the work for you and deliver the results via email and you don’t pay a markup to someone like me to hand off your search for you to Nerac.
The Center for Research Libraries offers a foreign doctoral dissertations database that includes more than 750,000 non-catalogued foreign doctoral dissertations. Dissertation Abstracts International provides bibliographic citations for dissertations written in the United States between 1938 and 1984, as well as some Canadian and foreign dissertations. (Dissertations written for professional degrees are not included in the collection.) Web site is: http://catalog.crl.edu/
If the client wishes to stay abreast of developing technologies in their particular field, one simple way to conduct continuous monitoring is to set up an ongoing Nerac (“Tech Track”) or Dialog (“Alert”) search. For a fee, these sites will send weekly, monthly, or quarterly updates of newly issued patents and patent applications found under certain search criteria. There are also ‘free’ patent monitoring sites, such as www.freshpatents.com .
College students, particularly engineering and law students can be engaged to search University library archives for published articles and other non patent prior art, this is particularly useful in invalidating a patent. Greg Ahronian is a most experienced patent buster in this area, he claims to visit university libraries and conduct such invalidity searches himself. Our cost to you would be much less, but it takes a few days or so to arrange this through the University (i.e. find qualified students to contract for the search and instruct them).
