USPTO – the same information you get in the PTO’s Patent Official Gazette (which, by the way, is no longer published in print). Dialog updates its US Patents database weekly – they try to get the information uploaded on Tuesday, when the PTO publishes the week’s patents.
Under 28 U.S.C. 1338, the federal district courts have exclusive jurisdiction over patent and federal trademark cases. State trademark law still exists, and occasionally you will find a state trademark case, but for the most part it’s all federal litigation. Lexis, of course, has patent and trademark cases (as does Westlaw); Dialog does not have caselaw. Dialog has a file called LitAlert (file 670), which contains records for patent and trademark infringement suits filed in selected US District Courts and reported to the USPTO (note the word “selected”). LexisNexis Courtlink, a web-based docket program (www.courtlinkeaccess.com), allows for searching by subject matter, including copyrights, patents and trademarks. PACER allows for subject matter searching as well, under the Nature of Suit (NOS) option.
In addition to Lexis and Dialog, there are a number of vendors on the web who offer patent searching and other IP related services, including Nerac and Delphion. These vendors are discussed below.
The United States Patent and Trademark Office has a wonderful site with a ton of useful information – a thorough presentation of the PTO website could easily take an hour by itself - including patents going back 1790. Patents from 1790-1975 are searchable only by patent number or classification; post-1975 patents are searchable in fulltext.
The PTO patent database is free, and you can do fairly complex Boolean searching. However, downloading and printing your results is laborious – you can’t dump all your results into your shopping cart at once and there’s no way to print them all out at once. In my opinion, free access isn’t so valuable if you have to spend a lot of time obtaining or formatting your results. I think speed and ease of download is just as important as cost.
Non-U.S. Patents
www.wipo.org – The World Intellectual Property Organization is the organization through which applications may be filed for patents in more than one foreign country under the Patent Cooperation Treaty (PCT). WIPO does not grant patents. Applications published through WIPO designate countries where a patent applicant might prosecute and obtain a patent at a later date. A WIPO document is denoted by WO and a number, i.e., WO 0079254 (the two zeros indicate that the application was filed in 2000.)
www.epo.org – The European Patent Office does grant patents. Through the EPO, a patent applicant can file a single application and obtain patents in several different countries. Individual countries, of course, grant patents as well.
The process from application to granted patent under either the PCT or the EPO is a long and complicated one and I am not sure I could explain it. The websites listed above have a lot of information explained in relatively clear terms, and Dialog’s coursebook entitled Patent Research Expertise Part 2: Patent families and Legal Status, copyright The Dialog Corporation (http://training.dialog.com/sem_info/courses/pdf_sem/pat2.pdf) explains it very well.
Obtaining Copies of Patents
Patent information that you obtain from Lexis or Dialog, while it is in full text, is not in the same format as that on file with the USPTO (or foreign patent authorities) and may not be complete. Dialog, for one, does not offer the complete diagrams or drawings in patents - it only provides the first image or drawing. And Dialog does not offer PDF images of the patent documents – you cannot get a copy of a patent online via Dialog, although you can order them through Dialog’s SourceOne service and the copies can be delivered electronically. Lexis allows you to download patent images, but it involves an extra step after you’ve retrieved the patent, and if you want an image of the complete patent (in PDF) you will incur an extra charge.
A patent attorney needs to see the
“actual” patent. For prosecution of
patents that cite other patents, and for litigation purposes, a true copy of
the patent is required. As mentioned
above, full text does not necessarily include drawings and diagrams, which are
necessary.
To obtain patent copies it’s usually easiest to go through a patent vendor, and there are many online. A partial list includes:
Delphion: www.delphion.com (owned by Thomson) - Delphion’s collection goes back to 1964.[1]
Lexis – patents back to 1790 (extra charge for PDF image)
Micropatent: www.micropatent.com to 1964
Nerac: www.nerac.com to 1974
Optipat: www.optipat.com (Optipat is part of Micropatent) - to 1964.
Reedfax: www.reedfax.com (owned by LexisNexis) patents on their system go back to 1966
Thomson Patent Store: www.thomsonpatentstore.com – this site has a lot of foreign patents as well as US patents. You can buy the patent piecemeal or purchase a subscription to the site.
The cost of ordering varies from vendor
to vendor but a rough average is 3.00 – 4.00 per patent. Most vendors can provide patents via the
web, as well as through email, fax and, of course, snail mail. In general, really old patents (say, the
fifties and older) aren’t available on the web.
Lexis, notably, offers patent images all the way back to 1790. It just depends on how much of the
Most of these vendors offer more than just patent ordering. Delphion and Nerac offer patent searching as well as prior art (about which more later) and published literature searches. Micropatent, Reedfax, and Optipat can get file histories. Many vendors also offer translation services for foreign patents. Nerac has patent search specialists who will do patent searches for you for a fee.
Delphion and Nerac offer various subscription plans. For instance, with a full service subscription to Delphion you can get unlimited patents for free (because you’re paying a lot for the subscription.) Nerac offers similar subscription plans.
If you don’t have contracts with Lexis or Dialog, one of the patent vendors like Delphion or Nerac would be a good option for patent research.
prior art
According to the Intellectual Property Law Dictionary, prior art is the “general level of knowledge in the area of expertise involved with an invention that existed prior to, or is available at the time of, the invention. The relevant prior art (i.e., the prior art that teaches all or some aspects of the invention in question) is the benchmark used to determine whether an invention is really `inventive.’”
Prior art includes:
- Any relevant description or discussion of the intentions’ essential characteristics in prior printed publication anywhere in the world, in any language, that was made available to the public before the invention was concieved of.
- Any relevant printed publication prepared by the inventor and published more than one year prior to the filing date of the patent application
-
Any relevant foreign or
From Intellectual Property Law Dictionary, Nolo Press, Steven R. Elias, 1989, via Dialog’s coursebook, Developing Patent Research Expertise, Part 3: Searching Prior Art.
Prior art can be divided, roughly, into two categories: stuff that we (meaning librarians, attorneys, etc.) can research and stuff we can’t. The stuff we can research includes web site materials, scientific papers and articles, news articles, conference reports, theses and patents. The stuff we can’t really research includes prior sales, offers for sale, presentations, brochures, posters, grant proposals (some of these are actually online), etc. The fact is that while you can do an almost comprehensive and exhaustive search of granted patents, there is no way to ever be sure you have all the information on a particular subject of prior art.
I don’t mean to sound like a Dialog representative, but the fact is that Dialog offers more material for prior art research than just about any other vendor, except maybe STN (I haven’t done a side by side comparison, but others have). Dialog has hundreds of databases devoted to scientific and technical literature, conferences, theses, and everything else just listed. Dialog also has a nifty feature which I have never found on any other database – you can go into Dialog’s file 411, Dialindex, and search for something across all of Dialog’s 500+ databases in one shot. This is the coolest feature ever, as far as I’m concerned.
STN (www.cas.org,/stn.hml - it’s a product of the Chemical Abstracts Society) provides online databases useful for prior art searching, especially in the field of biotechnology – STN has databases of gene sequences that are not available anywhere else, including Dialog. I know nothing about gene sequence searching, or indeed biotechnology at all, except that patents concerning DNA and gene sequencing can be hundreds of pages long and consist of many many lines of amino acid sequences (ATAG ATAG etc. etc.), but my biotech IP attorneys say STN is indispensable.
Document delivery services are essential, since attorneys
need copies of articles once they’ve found bibliographical citations on Dialog
or STN or some other databases. I use
Lonesome Doc a lot because my IP attorneys request a lot of articles from
medical journals. Lonesome Doc (see http://www.nlm.nih.gov/psd/cas/ldlibraries.html
for info on signing up) is a service of the National Library of Medicine. Once you have located articles on PubMed or another of NLM’s
databases you can request copies of the articles via Lonesome Doc. Any library can join; the only requirement is
that the library be near a medical library –
Maintenance
Fees
Patents based on applications
filed on or after
You can, in theory, also look up a patent’s maintenance fee schedule and payment history on the PTO’s PAIR (Patent Application Information Retrieval) page (http://pair.uspto.gov/cgi-bin/final/home.pl); I say in theory because, according to my guy at Landon & Stark who knows everything about patent assignment and maintenance records, the information on the PAIR page is not always complete or accurate. Therefore, if you need to be really certain of the maintenance fees due and owing on a patent, you need to call the PTO at 703-308-5036 or 703-308-5037.
Assignee Information
One of the most important facts about a patent is who owns it. A patent will display the name of its assignee at issuance on the face of the patent, but patents can be reassigned and that information, of course, will not appear on the patent face. Dialog has several patent files which give post-issuance assignment information, including INPADOC (345) and CLAIMS/CURRENT PATENT LEGAL STATUS (123). However, the assignment information on Dialog is updated only every 2 months. The PTO’s time lag for processing/updating assignee changes is 60-90 days, but here’s the catch: the PTO does not require that changes in patent assignment be recorded with them; it’s done at the discretion of the assignors and assignees. So. How can you be absolutely certain of the ownership of a particular patent? I don’t know.
Patent Families
A patent family is “a group of equivalent patents granted in several countries for the same invention as a result of application in those countries, and usually citing priority applications in common. As patents issue in various countries around the world, the patent family grows accordingly.” (from Patent Research Expertise Part 2: Patent families and Legal Status, copyright The Dialog Corporation).
The best source for patent
families information is INPADOC, the
This is a sample patent family record from INPADOC:
5164657
Basic Patent (No,Kind,Date): GB 8331698 A0 19840104 <No. of Patents: 011>
PATENT FAMILY:
Patent (No,Kind,Date): CH 665813
A 19880615
VERPFLEGUNGSEINRICHTUNG IN EINEM FLUGZEUG.
(French; German; Italian)
Patent Assignee: MESSERSCHMITT BOELKOW BLOHM
Author (Inventor): SPRENGER WILFRIED; KIRMA SAFA
Priority (No,Kind,Date): DE 3245986
A 19821211
Applic (No,Kind,Date): CH
836215 A 19831118
IPC: *
B64D-011/04
Derwent WPI Acc
No: * G
84-153361
Language of Document: German
Legal Status (No,Type,Date,Code,Text):
CH 836215 A
19880615 CH AGA PUBLISHED AS MAIN PATENT
(PUBLIZIERT ALS
HAUPTPATENT)
CH 665813 A
19880615
CH 665813 P
19821211 CH AA PRIORITY OF THE PATENT
(PATENT
APPLICATION) (PRIORITAET DES
PATENTES
(PATENTANMELDUNG))
DE 3245986 A
19821211
CH 665813 P
19831118 CH AE APPLIED (PATENT APPLICATION)
(ANGEMELDET (PATENTANMELDUNG))
CH 836215 A
19831118
CH 665813 P
19890731 CH PL PATENT CEASED
(LOESCHUNG/RADIATION/RADIAZION)
Patent (No,Kind,Date):
DE 3245986 A1
19840614
VERPFLEGUNGSEINRICHTUNG IN EINEM FLUGZEUG
MIT AUF ZWEI DECKS
ANGEORDNETEN VORRATSWAGEN (German)
Patent Assignee: MESSERSCHMITT BOELKOW BLOHM (DE)
Author (Inventor): SPRENGER WILFRIED ING GRAD (DE); KIRMA SAFA DIPL
ING
(DE)
Priority (No,Kind,Date): DE 3245986
A 19821211
Applic (No,Kind,Date): DE
3245986 A 19821211
IPC: *
B64D-011/04; B64C-001/22
Derwent WPI Acc
No: * G
84-153361
Language of Document: German
Patent (No,Kind,Date): DE 3245986
C2 19841129
VERPFLEGUNGSEINRICHTUNG FUER FLUGZEUGE
(German)
Patent Assignee: MESSERSCHMITT BOELKOW BLOHM (DE)
Author (Inventor): SPRENGER WILFRIED ING GRAD (DE); KIRMA SAFA DIPL
ING
(DE)
Priority (No,Kind,Date): DE 3245986
A 19821211
Applic (No,Kind,Date): DE
3245986 A 19821211
Filing Details: DE C2 D2
Grant of a patent after examination process
IPC: *
B64D-011/04; B64C-001/22
Language of Document: German
Legal Status (No,Type,Date,Code,Text):
DE 3245986 P
19821211 DE AE DOMESTIC APPLICATION (PATENT
APPLICATION) (INLANDSANMELDUNG
(PATENTANMELDUNG))
DE 3245986 A
19821211
DE 3245986 P
19840614 DE A1 LAYING OPEN FOR PUBLIC
INSPECTION (OFFENLEGUNG)
DE 3245986 P
19840614 DE OP8 REQUEST FOR EXAMINATION AS
TO PARAGRAPH 44 PATENT
LAW (PRUEFUNGSANTRAG
GEM. PAR. 44
PATG. IST GESTELLT)
DE 3245986 P
19841129 DE D2 GRANT AFTER EXAMINATION
(PATENTERTEILUNG
NACH DURCHFUEHRUNG DES
PRUEFUNGSVERFAHRENS)
DE 3245986 P
19850509 DE 8363 OPPOSITION AGAINST THE
PATENT (EINSPRUCH GEGEN DAS PATENT ERHOBEN)
DE 3245986 P
19880511 DE 8365 FULLY VALID AFTER OPPOSITION
PROCEEDINGS (NACH DURCHFUEHRUNG DES
EINSPRUCHSVERFAHRENS VOLL AUFRECHT)
DE 3245986 P
19910627 DE 8327 CHANGE IN THE
PERSON/NAME/ADDRESS OF THE PATENT
OWNER
(AENDERUNG IN
PERSON, NAMEN
PATENTINHABERS)
DEUTSCHE AIRBUS
GMBH, 2000
DE 3245986 P
19930617 DE 8327 CHANGE IN THE
PERSON/NAME/ADDRESS OF THE PATENT OWNER
(AENDERUNG IN
PERSON, NAMEN
PATENTINHABERS)
DEUTSCHE AEROSPACE
AIRBUS GMBH, 2000
DE
DE 3245986 P
19950622 DE 8327 CHANGE IN THE
PERSON/NAME/ADDRESS OF THE PATENT OWNER
(AENDERUNG IN PERSON, NAMEN
PATENTINHABERS)
DAIMLER-BENZ
AEROSPACE AIRBUS GMBH, 21129
DE 3245986 P
19990401 DE 8327 CHANGE IN THE
PERSON/NAME/ADDRESS OF THE PATENT OWNER
(AENDERUNG IN
PERSON, NAMEN
PATENTINHABERS)
DAIMLERCHRYSLER
AEROSPACE AIRBUS GMBH, 21129
DE 3245986 P
20001207 DE 8327 CHANGE IN THE
PERSON/NAME/ADDRESS OF THE PATENT OWNER
(AENDERUNG IN
PERSON, NAMEN
PATENTINHABERS)
EADS AIRBUS GMBH,
21129
DE 3245986 P
20020103 DE 8327 CHANGE IN THE
PERSON/NAME/ADDRESS
OF THE PATENT OWNER
(AENDERUNG IN
PERSON, NAMEN
PATENTINHABERS)
AIRBUS
DEUTSCHLAND GMBH, 21129
DE 3245986 P
20020214 DE 8339 CEASED/NON-PAYMENT OF THE
ANNUAL FEE (WEGEN NICHTZ. D. JAHRESGEB.
ERLOSCHEN)
FRANCE (FR)
Patent (No,Kind,Date): FR 2537543
A1 19840615
DISPOSITIF DE RESTAURATION D'AERONEF
(French)
Patent Assignee: MESSERSCHMITT BOELKOW BLOHM (DE)
Author (Inventor): SPRENGER WILFRIED; KIRMA SAFA
Priority (No,Kind,Date): DE 3245986
A 19821211
Applic (No,Kind,Date): FR
8319513 A 19831206
IPC: *
B64D-011/04; B64C-001/22
Language of Document: French
Patent (No,Kind,Date): FR 2537543
B1 19861010
DISPOSITIF DE RESTAURATION D'AERONEF
(French)
Patent Assignee: MESSERSCHMITT BOELKOW BLOHM (DE)
Author (Inventor): SPRENGER WILFRIED; KIRMA SAFA
Priority (No,Kind,Date): DE 3245986
A 19821211
Applic (No,Kind,Date): FR
8319513 A 19831206
IPC: *
B64D-011/04; B64C-001/22
Language of Document: French
FRANCE (FR)
Legal Status (No,Type,Date,Code,Text):
FR 8319513 AN
19840615 FR AGA FIRST PUBLICATION OF
APPLICATION (DELIVRANCE (PREM. PUB. DEMANDE
DE BREVET))
FR 2537543 A1
19840615
FR 8319513 AN
19861010 FR AGA SECOND PUBLICATION OF PATENT
(DELIVRANCE
(DEUX. PUB. BREVET))
FR 2537543 B1
19861010
FR 8319513 AN
DECHEANCES)
FR 2537543 PN
19821211 FR AA PRIORITY (PATENT) (PRIORITE
(BREVET))
DE 3245986 A
19821211
FR 2537543 PN
19831206 FR AE APPLICATION DATE (DATE DE
LA DEMANDE)
FR 8319513 A
19831206
Patent (No,Kind,Date): GB 8331698
A0 19840104
VICTUALLING INSTALLATIONS IN AIRCRAFT
(English)
Patent Assignee: MESSERSCHMITT BOELKOW BLOHM
Priority (No,Kind,Date): DE 3245986
A 19821211
Applic (No,Kind,Date): GB
8331698 A 19831128
IPC: *
B64D-011/04
Language of Document: English
Patent (No,Kind,Date): GB 2131779
A1 19840627
VICTUALLING INSTALLATIONS IN AIRCRAFT
(English)
Patent Assignee: MESSERSCHMITT BOELKOW BLOHM
Author (Inventor): SPRENGER WILFRIED; KIRMA SAFA
Priority (No,Kind,Date): DE 3245986
A 19821211
Applic (No,Kind,Date): GB
8331698 A 19831128
National Class: * B8W3; B8WG
IPC: *
B64D-011/04
Language of Document: English
Patent (No,Kind,Date): GB 2131779
B2 19860730
VICTUALLING INSTALLATIONS IN AIRCRAFT (English)