Criteria Which Differentiate Search Firms
What They Search - Foreign and Domestic
Selecting the Best Search Firm / How to Find Search Terms
Appendix A. Search Firms and Services They Provide
Appendix B. Sources of Information on Prior Art Searching
This paper seeks to evaluate patent search firms, their role in the patenting procedure, and how one could go about finding and selecting such a firm.
Seeking patent protection of an invention is an expensive and time consuming process. Obtaining a patent typically costs anywhere from $5,000 to $10,000 and takes 1 to 3 years for an average invention. These costs can rise much higher if the invention is in a highly technical and specialized field, for example, pharmaceuticals, and biotechnology.
As this is a large investment, it would be advantageous to determine whether or not the invention is patentable before investing the money and time involved in pursuing a patent. One way to do this is to conduct a prior art search.
For an invention to be patentable, it must be useful, novel, and nonobvious in light of prior art (See U.S.C. Sec. 101-103). As the invention is most likely useful (or no one would be seeking a patent on it in the first place), the difficulty lies in establishing that it is novel (new), and unobvious.
To determine novelty and unobviousness, one must look to "prior art". The following excerpt from Understanding Intellectual Property Law describes what prior art includes:
1. A printed publication or patent anywhere:
(a) by another if dated before the inventor's invention date, or
(b) by the inventor if dated more than one year before the date the inventor applies for a patent.
2. Anything in public use or on sale in the United States by the inventor or anyone else if dated more than one year before the date the inventor applies for a patent.
3. Anything in secret commercial use by the inventor if dated more than one year before the date the inventor applies for a patent.
4. Anything "known or used" in a publicly accessible form in the United States by another if dated before the inventor's invention date.
5. Anything described in a United States patent, regardless of when it issues, by another if the application for that patent was filed in the United States before the inventor's invention date.
6. Anything invented in the United States by another if dated before the inventor's invention date (Donald S. Chisum and Michael A. Jacobs. Understanding Intellectual Property Law, Sec. 2c[5]p2-84,(1992).
Of this list, information as to items 1(b) and 3 will most likely come directly from the inventor. As all inventors pursuing a patent have a duty of candor to the Patent and Trademark Office (PTO), they must reveal all information to the PTO that may qualify as prior art. While this duty extends to all items listed above, relying on the inventor alone will typically not be sufficient for the other items, as the inventor will not typically have knowledge of all other publications, patents, etc. which could qualify as prior art.
It is important to determine whether there is any prior art in existence which would render an invention unpatentable before filing the patent application. Even if the PTO does not find a piece of prior art and issues a patent, in an infringement action, accused infringers will most certainly leave no stone unturned in their effort to show the patent is invalid. As damages in infringement actions routinely climb into the millions, accused infringers are motivated to spend large sums of money on prior art searches. Thus it is in the patent applicant's best interest to do a thorough search before applying for a patent.
Others interested in prior art searches include potential purchasers of patents (to determine the strength and validity of the patent) and, as mentioned above, accused infringers.
One note, while the PTO conducts its own search to determine patentability, it typically concentrates its search on patents, which may not contain all important prior art for a given invention. Thus it is not good advice to depend upon this search when determining patentability or patent validity.
The next question an inventor faces after they have decided to conduct a prior art search is how to execute such a search. There are a number of possibilities, including: conducting a search by themselves, hiring a patent attorney, hiring a search firm, or a combination of the preview alternatives.
While each alternative has its pros and cons, the following case can be made for the use of search firms. First, their employees tend to specialize in searching certain areas of technology, thus making them more efficient and more thorough than an inexperienced searcher. It is important to remember that thoroughness is the primary concern in prior art searching. Secondly, a patent attorney will many times use a patent search firm for searching and then simply add a surcharge to the cost of the search.
Assuming an inventor has decided to enlist the aid of a search firm, either to supplement their search or to perform a complete search, they must then go about selecting the search firm. The following areas may provide useful information in differentiating search firms.
Prior art includes both foreign and domestic patents and publications. Given the global economy and worldwide growth in technology, it is evident that foreign materials will be important sources of prior art.
While they can be difficult to search, foreign sources are important, particularly Japanese and European patents and publications. This may necessitate the searcher to be fluent in a foreign language or have access to a translator. Databases with translated abstracts alone may not contain enough information about what is disclosed in the patent's specification to be of use.
When searching domestic prior art, both computer and manual searching of United States Patents is desirable. Estimates of misfiled or missing patents in the public search rooms of the PTO are typically in the 10% range (Source: U.S.P.T.O. study). Additionally, databases containing domestic publications should also be searched.
The searcher's education and experience in a given field can greatly affect the quality of the search. Some firms have experts in fields varying from pharmaceuticals to semiconductors. For example, a searcher experienced in electronics would not be a good choice for an invention dealing with biotechnology. Another criteria may be the need for the searcher to have an advanced degree or substantial work experience in the particular field.
While typical searches by professionals cost in the neighborhood of $100 to $200 per hour, the total cost of a search can vary greatly depending mostly upon how thorough a search is wanted by the inventor, and, correspondingly, which sources are to be searched (David Pressman, Patent It Yourself, 3rd Ed. 1995). The particular invention and the circumstances of the inventor will typically dictate the cost of the search. A sole inventor working in their 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.
Generally, the more thorough the search the more the patent will be worth. Thus is may pay to search as many sources as possible.
Time, however, is also a factor in the search equation. The longer one waits to file the more prior art is available to invalidate the potential patent. This is where the experience of seasoned patent attorney can be invaluable. They can provide guidance as to just how much searching should be done before filing to obtain the maximum benefit.
Keeping the above criteria in mind, inventors must contact search firms and inquire as to which firm will best suit their needs. No absolute answers can be given here, as the best search firm will depend upon the specific situation the inventor is in.
The following considerations can affect the decision:
Is the inventor under financial constraints? This includes weighing the potential financial return if a valid patent is granted versus the costs associated in getting the patent.
Does the invention cover cutting edge technology, e.g. genetics, or is it more of an improvement on an old technology (e.g., a better mousetrap)?
How well informed is the inventor about the state of the art in the field? In other words, is it a small and specialized field in which practitioners are aware of what others in the field are doing? Are most of the advances published in particular journals, or are patents the preferred means of disclosure?
How long can the inventor afford to wait to get the results of the search back? Is there a statutory bar approaching (e.g., public sale)?
Are there likely to be significant sources of prior art for the given field in foreign countries, or is the technology based mostly within the United States?
After contacting search firms the inventor will quickly appreciate how the costs, qualifications of the firm, and speed of the search will vary greatly depending upon the above considerations. An example of this was illustrated by one search firm contacted in the course of researching this paper. They stated that the cost of the search was essentially irrelevant when one is searching for prior art as a defendant in an infringement action. The potential damages facing defendants in such cases are typically so high as to make search costs irrelevant.
Listings of search firms can be found in a number of places, including Appendix A of this paper. Another useful source of search firms is practicing patent attorneys. Each will most likely have a list of their preferred firms developed over years of practice. This advice can be invaluable in finding good search firms.
Many sources recommend using retired PTO patent examiners who now run conduct patent searches on the side. Many of them can be located in the USPTO's publication Attorney's and Agents Registered to Practice Before the U.S. Patent and Trademark Office (A&ARTP). This may be useful, but once again since these searchers have be trained in searching patents, for inventions in which non-patent prior art is important this may not necessarily be the best way to go.
Finally, organizations and publications can provide references or referrals to prior art search firms. Many firms also advertise in the Journal of the Patent and Trademark Office Society, and other legal publications.
The importance of accurate and thorough prior art searches can not be overestimated. Not only can they prevent the expense of prosecuting a worthless patent, they can also aid in the constructing of appropriate claims that are neither overbroad nor too narrow. Finally, they are invaluable when in comes to infringement suits.
Inventors should take note: saving a few cents in the short term by neglecting to perform a thorough a prior art search can lead to devastating consequences when it comes time to bring suit to enforce a patent.
In many cases, prior art search firms offer the most thorough search possible in the least amount of time. Unless the inventor has unusual resources and skill in searching, qualified search firms appear to be the best means of accomplishing an effective prior art search.
One Hundred Summer Street, 27th Floor
Boston, MA 02110
PH: 617-574-9574
FAX: 617-574-9559
Contact: Bruce Rubinger, PhD, Managing Director
Global Prior Art searches literature, patents, product manuals, and other sources. They can manually search the Japanese Patent Office. They also offer manual searching of the largest collection of European Patents, including French, East and West German, and Russian. Global Prior Art can also provide in-depth technical expertise in electronics, medical devices, pharmaceuticals, and biotechnology.
2201 Jefferson Davis Highway, Suite 505
Arlington, VA 22202
PH: 703-415-1555
FAX: 703-415-1557
PATMARK@Interramp.com
Specialized Patent Services offers full patent services, including Patent, Trademark and Copyright Searching, patent and file wrapper copy services, and certification and legalization of documents. They also offer hand deliveries of documents to the PTO and law offices.
P.O. Box 404
Belmont, MA 02178
PH: 617-489-3727
srctran@world.std.com
Contact: Gregory Aharonian
STO offers patent search and technology analysis in the following areas: software, hardware, telecommunications, electronics, and medical devices.
They also maintain "the largest software and hardware prior art database in the country."
An in depth description of the services STO offers can be found at their World Wide Web at the following address: http://sunsite.unc.edu /patents/intropat.html. Below are some highlights:
STO maintains the only large database "in the galaxy", with information on over 15,000 computer programs available in source code form, 6,000 software patents, and 200,000 abstracts to algorithms and software technology reports and articles. STO's database has been under private development for eight years.
STO checks many sources when performing searches, among them: government and university technical reports, journals articles, university thesis, and the Internet. STO also has access to technical libraries in the Boston and Berkeley areas.
STO offers the following searches: US patent prior art searches for $200; Literature prior art searches for $400; Foreign patent prior art searches for $800; and Infringement defense searches for $1000+.
Micropatent, a prominent publisher of patent information on CD-ROM, also offers a patent search service. More information can be found on their World Wide Web page at: http://www.micropat.com/microp/prelegal.html.
Through its computer based library, Micropatent can do your patent searching for you. They have the capability to search on over 20 fields including title, abstract, assignee, inventor, U.S. and IPC classification numbers, priority data, application numbers, dates, and inventor location, as well as U.S. full text.
Micropatent will search three database, including: the U.S. Patent Database -- containing all granted U.S. patents back to 1975; the EP Patent Application Database -- containing all patent applications back to 1978 as published by the European Patent Office (EPO); and the WO Patent Application Database -- containing all patent applications back to 1978 as published by the World Intellectual Property Organization (WIPO).
The Electronic Data Systems (EDS) Shadow Patent Office (SPO) offers easy-to-use, highly effective patentability and infringement searches against the full-text of the 1.7 million U.S. patents issued since January, 1972. More information can found at its World Wide Web page at: http://www.spo.eds.com/patent.html. Services offered include:
User inputs less than 50 words to describe his invention. User receives information about 25 patents, including the abstracts, that are similar to the invention described.
Price: $74.00
User inputs more than 49 words but less than 1,000 words to describe his invention. User receives information about 25 patents, including the abstracts, that are similar to the invention described.
Price: $124.00
User inputs patent number. User receives information about 25 patents that are similar to the patent identified.
Price: $149.00
American International Property Law Association Bulletin. Published bimonthly. 2001 Jefferson Davis Highway, Suite 203, Arlington,VA 22202.
Susan B. Ardis, An Introduction to U.S. Patent Searching: The Process, 1991.
Fred K. Carr, Searching Patent Documents for Patentability and Information, 1982.
International Symposium: Patent Information and Documentation, Germany, 1977.
Journal of the Patent and Trademark Office Society. Published monthly. Box 2600, Arlington, VA 22202.
National Inventors Foundation. 345 W. Cypress St., Glendale, CA 91204. Contact: Ted DeBoer, Executive Director.
Patent Office Professional Association Newsletter. Published monthly. Box 2745, Arlington, VA 22202.
David Pressman, Patent It Yourself, Nolo Press, 3rd Ed. (1995).
Created on 10/5/95.
Page Construction by: J.R. Montgomery