Student Project #24

by Mike Dulik

RESEARCH QUESTION:

Is the World Wide Web an effective means to Search for Prior Art with respect to Patents as performed by an End User?

I have a few ideas that (I think) would make marketable products. With a healthy respect in mind; for what it would take to actually produce a profitable invention, I need a way to assess that my projects are worth pursuing. I am currently at the stage often associated with "Patent Searching". But to be more precise, it is called the "Search for Prior Art."

This initial search is a preliminary verification that the invention is worth further time and resources. An initial search is not intended to be complete, but rather helps determine whether professional searching is warranted. It's called a Prior Art Search since the objective is to determine whether someone else invented your idea before you. (Patent Cafe)

So I - the End User; a nonprofessional searcher, need an effective means to access, retrieve, analyze, document and transmit information. Some of the Traditional Methods are:

1. Making contact with industry experts..... after all, inventions, products and business are people driven.
2. Traveling to a local library..... volumes of academic and trade information, managed by research experts.
3. Traveling to a government patent office or depository library..... the source material staffed by patent experts
4. Subscribing to an online patent services..... many services offer databases of specialized and high quality material.
5. Surfing the World Wide Web via Internet Connection and PC System.

My preference the World Wide Web (WWW). In this project I will explore the WWW as a means of searching for Prior Art with respect to patents as performed by an End User. I will use the other more traditional methods (Options 1 thru 4) as basis for reference and comparison.

Main advantages of the WWW:

• Relatively low cost of a home PC with an Internet connection
• Access time is 24/7
• Place of access is of choice of user
• Nature if information is interactive (and increasingly more-so)
• To say the Internet Medium is becoming stronger in most fields is an understatement, especially in B2B
• Information can be integrated with a home PC system. Copied, edited, compiled, formatted and transmitted

Main Disadvantages of WWW:

• No face to face human interaction
• Not all information is posted on the web. Also see notes for Historical Archiving
• Not all information on web is quality material
• Security is yet to be 100% proven
• Scam artists also use the web to their advantage

Some Good WWW Sites:

Two of the most reputable main sites for obtaining free online data. Also see notes for Historical Archiving

• The United States Patent Office Full Text Database. Contains all patents back to January 1, 1976. <http://www.uspto.gov>
• The IBM Intellectual Property Network. Contains all patents back to January 5, 1971. <http://www.patents.ibm.com/>

Sites of quality for information related to patents and searching techniques:

• The Patent Cafe. Good site for inventors of all disciplines and experience level. <http://www.patentcafe.com/>
• Intellectual Property Mall by Franklin Pierce Law Center. Informative quality data researched by a law school. <http://www.ipmall.fplc.edu/>
• Searcher Magazine Online. Magazine for database and searching professionals. <http://www.infotoday.com/searcher/default.htm>

Summary

It is important to understand the scope and nature of the Search for Prior Art. It is not a true patent search. The difference has a bearing on the method of searching one may use. Then knowing the capabilities of the WWW method will enable one to use it as an effective method of choice.

An online search for patents is not a patent search. Although it is now possible to conduct a limited search for patents on the Internet, it is not possible to do a true patent search; and the one that you, or your attorney or agent, may conduct online will not qualify as such. None of the databases now available online can be so thoroughly and effectively searched as to accomplish a true patent search. (Sharpe)

As mentioned in the introduction, the purpose a Search for Prior Art is one of preliminary findings through method of efficient return. The goal has been achieved. The results then serve as criteria to assess if the project warrants further expenditure.

It is my opinion that the WWW is the key element in an overall package to Search for Prior Art. My approach is to use the WWW to initiate projects; layout guidelines and create rough drafts. While the traditional methods are non-lead elements, they should be a part of all review and never be overlooked. In some cases, the entire preliminary search can be conducted via WWW. More often than not, the WWW will be the engaging element in a well supported multi-element effort.

As I have noticed with many things Internet, it can add new dimension to an existing thing. However it is usually a new form of those things, not a replacement. In regards to Searches for Prior Art, I am appreciative of the WWW's existence and look forward to using it as a productive tool. As for the rest of the inventive process to a profitable end...that's another story.

Terms and Related Data

• Industry Experts: Patent attorneys, professional searchers, experts in the industry of the proposed patent.
• Local Library: Generally the largest public library accessable. Could be a specialty library with granted access. Libraries often have banks of trade journals and catalogs like Thomas Register, Sweets, etc.
• Government Patent Offices.
  • PTO - Main Patent and Trademark Office in Arlington, Virginia. This place is most frequented by patent professionals. It is here that the U.S. archives the nearly 6,000,000 patents that go back to the origin of such recording.
  • PTDL - Patent a Trademark Depository Library. There about 80 of such establishments located near most large U.S. cities. These places are open to the public and offer the greatest resources second only to the Main PTO.
• Online Patent Services: Specialize databases and searching systems. To name a few: Derwent, QPAT, Dialog, LexisNexis.
• Historical Archiving: This is an important consideration that has bearing on the scope of a search. Compare all resources with the PTO - Main Patent and Trademark Office in Arlington, Virginia. It is at this location that the U.S. archives the nearly 6,000,000 patents that go back to the origin of such recording.

• Patent
• Patent--Searching
• Patent --Searching Automation
• Patent-- Searching Computer Network Resources
• Patent --Searching Handbook, Manuals, etc.
• Patents-- Research
• Patent --Information Services
• Patents --Databases
• Patents --Miscellaneous
• Invent
• End User
• Internet

Cottone, James, F. "Online Searching; A Good News Story, But Not the Whole Story" Journal of the Patent and Trademark Office Society 79 n4 (April 1997) p233+ Infotrac 17 May 2000.<infotrac\business asap\subject\patent search*>

General Article (no author listed) "Prior Art Search - Does It Already Exist?" Patent Cafe 17 May 2000 <patent cafe\patent search\starting point\step 2>

Harrington, Curtis L. "Inventive Ideas about Patent Searching." Machine Design 69.23 (11 Dec. 1997): p110+ WilsonWeb 17 May 2000 <wilsonweb\ftm\subject\patent search*>

Harrington, Curtis L. "Do You Really Need a Patent Search?" Hydrocarbon Processing (International Edition) v77 no9 (September 1998) p163+ 17 May 2000 <wilsonweb\ftm\subject\patent search*>

Hitchcock, David. Patent Searching Made Easy. Berkeley, CA: Nolo Press, 1999

Before embarking on the patent-application process, inventors usually do a preliminary patent search to uncover any patents that are similar to their own ideas. Based on the results of the search, an inventor makes decisions on whether to pursue a patent, modify the idea, or abandon it entirely. . . . The author does not oversimplify the search process or give the false impression that a comprehensive search can be done using Internet resources alone. The explanations are helpful for both computer expert and 'newbie.' (50-500 words).

Rev. of "Patent Searching Made Easy", by David Hitchcock. Booklist 15 June 1999: 1862. Abstract. WilsonWeb <wilsonweb\bookreview\patent searh*>

Jack, Robert F. "Database Secrets of the U.S. Patent & Trademark Office." Searcher v6 n5 (May 1998): p12+ LexisNexis 28 March 2000 <http://www.lexis-nexis.com/lncc>

Lambert, Nancy. "A Comparison of Two Top Internet Sites, And Why I Still Search Patents Online." Searcher 1 March 1999: no3 v7 p48 LexisNexis 28 March 2000 <http://www.lexis-nexis.com/lncc>

Levy, Richard C. The Inventors Desktop Companion. Detroit, MI: Visible Ink Press, 1995

Pressman, David. Patent it Yourself. Berkeley, CA: Nolo Press, 1997

Sharpe, Charles C. Patent, Trademark, and Copyright Searching on the Internet. Jefferson, NC: McFarland and Company, Inc., 1999

Siwolop, Sana. "Internet Connects Inventors to Information (and One Another) "New York Times; 9 September 1999: late edition G 9+. ProQuest 17 May 2000. <http://proquest.umi.com/pqdweb>

Skrzycki, Cindy. "The Regulators; System's Trademark Have a Slow Day" The Washington Post;19 November 1999: final edition E1+. ProQuest. 17 May 2000. <http://proquest.umi.com/pqdweb>

Stevens, John "Patent" Encyclopedia Britannica Online. 1999 Encyclopedia Britannica. 23 March 2000 <http://www.britannica.com/bcom/eb/article/0/0,5716,60174+1+58705,00.html>

Terms:

• Table Designations, "Marks": in the PathFinder Body of this report: "Marks" refer to the marked or selected articles that I found useful from a set of citations.
• "Internet": Internet is defined for the purposes of this report as a connection for one to access the WWW.
• "Online": Online is a broad term, with varying definitions based on context. For this report "online" was used a search term to identify sources of information relating to the topic of an individual using an internet connection and the world wide web as a tool. Note that some occurrences, particularly in earlier wears; "online" means to use an electronic/computer network to perform some service. Under some conditions, these networks may not be Internet but Intranet, thus not a part of the WWW. During my research I found some mention to "online databases" were of private Intranet nature. However these fee based private networks could be accesses via Internet/WWW.

Related Topics that I uncovered during the research process.

• "General Report Topic with Repect to Time": Since the Internet is relatively new in comparison to the patent searching, this timeline difference did influence the manner I structured my searh and worksheet. While my narrowed worksheet searches did focus on citation results of the three sets; internet, patent searches and internet - that narrowed approach sometimes was too narrow. I occasionally had to loosen up the approach by not including the internet set. This allowed my to review information on patent searching methods that did not utilize the Internet. I feel this information was important to more fully understand the "traditional methods" and further use them as a basis for reference and comparison with Internet methods.
• "Specific Report Information with Respect to Time": The two main WWW databases: USPTO and IBM websites are of somewhat recent utilization. The IBM site being WWW accessable to the public since January 1997, the USPTO since mid 1998. Therefore I feel their track records are relatively new in comparison to traditional methods.
• "Internet security as applied to patent searching": Since the Search for Prior Art is a subset of Patent Searching, the searcher does need to be careful on what information they may use in the querying process. I did not see a real lot in the way of ensuring the searcher, the medium is 100% secure. Allow my hypothetical search, "I am querying a source that if an abc mechanism with a xyz function as described... has ever been invented?" Who has access to your queries? In some cases, a query may tell a lot-if not too much about a searcher's idea. Like many things Internet, I think these concerns need to addressed. The only clear cut privacy statement I found so far was on the USPTO Site.
• "Level of Searching Expertise": The scope of this report is about the End User searcher and their Search for Prior Art. If (hopefully) a search provides encouraging results, then the End User Searcher must decide if that he/she them self want to do the searching on the next level; a true Patent Search. While an End User can be the one doing this, there are also professionals in this field who perform on an expert level. Most frequently, they are Professional Searchers or Patent Attorneys. Many opinions (including mine) would suggest the latter, especially if an individual starts to get serious about the inventing process. It is beyond the scope of this report to cover who might conduct the true patent search.

"Author's Note": I found this topic intriguingly similar in the approach to the material covered in LSCI 105. Using the Internet to access and evaluate data for meaningful information.

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These materials are copyrighted, but may be used for educational purposes if you inform and credit the author and cite the source as: LSCI 105 Online Research. All commercial rights are reserved. Send comments or suggestions to: Eric Brenner at brenner@smccd.net