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. U.S. patents contain numbered lines that must be cited in litigation and correspondence, just like the page numbers of cases. So while the full text of patents is certainly helpful for research, a true copy of the patent is essential.

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 US patent files a vendor has added to its system.

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 U.S. patent issued before the inventor conceived of the invention for which a patent is being sought, or any U.S. patent application made prior to such conception.

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 – Houston has the Houston Academy of Medicine/Texas Medical Center Library, who provide copies of articles via Lonesome Doc for $11.00 per article and up. The articles are delivered to the web in PDF or TIFF format.

Maintenance Fees

Patents based on applications filed on or after December 12, 1980 must be maintained by the payment of regularly scheduled maintenance fees approximately 4 years, 8 year and 12 years into the life of a patent. A patent will expire if maintenance fees are not paid. Notice of patents that have expired due to failure to pay maintenance fees, and patents that have been reinstated after late payment of maintenance fees, are published in the Official Gazette, which is available online at the PTO website.

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 International Patent Documentation Center, a centralized bibliographic source for patent documents (it’s now part of the European Patent Office.) According to Dialog, their version of INPADOC is unique in bringing together patent families – all equivalent patents that share common priorities for a particular invention. INPADOC is also available on Lexis.

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:

SWITZERLAND (CH)

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

SWITZERLAND (CH)

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)

GERMANY (DE)

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

GERMANY (DE)

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 ODER WOHNORT DES

PATENTINHABERS)

DEUTSCHE AIRBUS GMBH, 2000 HAMBURG, DE

DE 3245986 P 19930617 DE 8327 CHANGE IN THE

PERSON/NAME/ADDRESS OF THE PATENT OWNER

(AENDERUNG IN PERSON, NAMEN ODER WOHNORT DES

PATENTINHABERS)

DEUTSCHE AEROSPACE AIRBUS GMBH, 2000 HAMBURG,

DE 3245986 P 19950622 DE 8327 CHANGE IN THE

PERSON/NAME/ADDRESS OF THE PATENT OWNER

(AENDERUNG IN PERSON, NAMEN ODER WOHNORT DES

PATENTINHABERS)

DAIMLER-BENZ AEROSPACE AIRBUS GMBH, 21129

HAMBURG, DE

DE 3245986 P 19990401 DE 8327 CHANGE IN THE

PERSON/NAME/ADDRESS OF THE PATENT OWNER

(AENDERUNG IN PERSON, NAMEN ODER WOHNORT DES

PATENTINHABERS)

DAIMLERCHRYSLER AEROSPACE AIRBUS GMBH, 21129

HAMBURG, DE

DE 3245986 P 20001207 DE 8327 CHANGE IN THE

PERSON/NAME/ADDRESS OF THE PATENT OWNER

(AENDERUNG IN PERSON, NAMEN ODER WOHNORT DES

PATENTINHABERS)

EADS AIRBUS GMBH, 21129 HAMBURG, DE

DE 3245986 P 20020103 DE 8327 CHANGE IN THE

PERSON/NAME/ADDRESS OF THE PATENT OWNER

(AENDERUNG IN PERSON, NAMEN ODER WOHNORT DES

PATENTINHABERS)

AIRBUS DEUTSCHLAND GMBH, 21129 HAMBURG, DE

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 19981009 FR ST LAPSED (CONSTATATION DE

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

GREAT BRITAIN (GB)

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)

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

GREAT BRITAIN (GB)

Legal Status (No,Type,Date,Code,Text):

GB 2131779 P 19821211 GB AA PRIORITY (PATENT)

DE 3245986 A 19821211

GB 2131779 P 19831128 GB AE APPLICATION DATA (APPL.

DATA)

GB 8331698 A 19831128

GB 2131779 P 19840627 GB A1 APPLICATION PUBLISHED

GB 2131779 P 19860730 GB PG PATENT GRANTED

GB 2131779 P 19980715 GB PCNP PATENT CEASED THROUGH

NON-PAYMENT OF RENEWAL FEE

971128

JAPAN (JP)

Patent (No,Kind,Date): JP 59118598 A2 19840709

EQUIPMENT FOR COOKING IN AIRCRAFT (English)

Patent Assignee: MESSERSCHMITT BOELKOW BLOHM

Author (Inventor): UIRUFURIITO SHIYUPURENGERU; ZAFUA KIRUMA

Priority (No,Kind,Date): DE 3245986 A 19821211

Applic (No,Kind,Date): JP 83231621 A 19831209

IPC: * B64D-011/04; B64C-001/22

Language of Document: Japanese

Patent (No,Kind,Date): JP 91035160 B4 19910527

Patent Assignee: MESSERSCHMITT BOELKOW BLOHM

Author (Inventor): UIRUFURIITO SHUPURENGERU; ZAFUA KIRUMA

Priority (No,Kind,Date): DE 3245986 A 19821211

Applic (No,Kind,Date): JP 83231621 A 19831209

IPC: * B64D-011/04

Language of Document: Japanese

UNITED STATES OF AMERICA (US)

Patent (No,Kind,Date): US 4660787 A 19870428

FOOD SUPPLY SYSTEM FOR AN AIRCRAFT (English)

Patent Assignee: MESSERSCHMITT BOELKOW BLOHM (DE)

Author (Inventor): SPRENGER WILFRIED (DE); KIRMA SAFA (DE)

Priority (No,Kind,Date): US 803501 A3 19851127; US 555685 A1

19831128; DE 3245986 A 19821211

Applic (No,Kind,Date): US 885380 A 19860714

Addnl Info: Abandoned

National Class: * 244118500; 186040000; 186047000

IPC: * B64D-011/04

Language of Document: English

UNITED STATES OF AMERICA (US)

Legal Status (No,Type,Date,Code,Text):

US 4660787 P 19821211 US AA PRIORITY (PATENT)

DE 3245986 A 19821211

US 4660787 P 19831128 US AA PRIORITY

US 555685 A1 19831128

US 4660787 P 19851127 US AA PRIORITY

US 803501 A3 19851127

US 4660787 P 19860714 US AE APPL. DATA (PATENT)

US 885380 A 19860714

US 4660787 P 19861006 US AS02 ASSIGNMENT OF ASSIGNOR'S

INTEREST

MESSERSCHMITT-BOELKOW-BLOHM GESELLSCHAFT MIT

BESCHRAENKTER HAFTUNG, P.O. BOX 801 ;

SPRENGER, WILFRIED : 19831214; KIRMA, SAFA :

19831214

US 4660787 P 19870428 US A PATENT

US 4660787 P 19870721 US CC CERTIFICATE OF CORRECTION

This is what the first page of a U.S. patent looks like:

A U.S. patent consists of: [2]

Bibliographical information: application number, patent number, filing date and date of issuance, patent title, inventor, assignee, references cited, classification, legal status, etc.

Abstract – a concise technical explanation of the invention, including that which is new in the art to which the invention pertains

Background and summary of the invention

Explanation of drawings, if any (many patents do not contain drawings)

Claims: define the patent and are what is legally enforceable in the invention

Searching Patent Applications

Most patent applications filed on or after November 29, 2000 will be published eighteen months after the filing date of the application. (Prior to this date, pending patent applications were not published or made available to the public until the patents had been granted. To see details of the legislation that implemented the Eighteen-Month Publication of Patent Applications provision, go to www.uspto.gov/web/offices/pac/pgpub.htm.)

A patent application number is the unique number assigned to a patent application when it is filed. The application number includes a two digit series code and a six digit serial number. The PTO began using the series code early in the 20^th century. The PTO has not always adhered to the same conventions in numbering patent applications (to say the least).

It’s very important to note that while the combination of the two digit series code and the six digit application number creates a unique number, the six digit application number is not unique – the PTO recycles these numbers. The same application number may be given to several different applications in different years – it is the series code that identifies the patent application. For instance, the above patent’s application number is 923379. This is also the application number for patent numbers 4,345,872 (application filed 1978, series 6), 4,704,224 (application filed 1986, series 6), and 5,294,307 (application filed 1992, series 7). The PTO cycles application number from 1 – 999,999 (theoretically – not all the numbers are always used) and when they get to 999,999, they go on to the next series. Series 10 began sometime in 2002; these applications won’t be published until after mid-2003. Also note that until recently, the PTO did not print the series code on the face of the patent.

Different patent databases index application numbers differently, and searching for application numbers differs from database to database.

The PTO database does not recognize the series code when you search for patents by application number – just use the six digit application number and you’ll pull all patents with that number. Also, when you search the PTO database for published applications (for as yet unpublished patents), don’t use the series code; instead, use the 4 digit year and the application number, padding with zeros so that the number comes to 7 digits (no, I don’t know why).

Dialog formats the series code and application number with a dash instead of a forward slash; i.e., 09-923379. If you search for the six digit application number through the “expand” feature, Dialog helpfully lists out each application number with its date, which can help you figure out which patent you are looking for.

Dialog and other patent vendors also allow you to search for patent application numbers in the format of the 4 digit year followed by the application number, with or without padded zeros, depending on the vendor.

If the process of searching for patent application numbers sounds confusing, that’s only because it is.

Here’s your interesting patent fact for the day: The PTO does not require proof that an invention works; it doesn’t conduct tests or require demonstrations. “Examiners assess patent applications according to four criteria: novelty, usefulness, nonobviousness and enablement, the last of which means that the patent must disclose how to construct the patented device. A device that does not work as claimed should be rejected for failing usefulness and enablement, but initially the burden of disproof is on the examiner. Statements of fact in a patent application are presumed true unless a good reason for doubt is found. The device has only to be ‘more likely than not’ to work..” (“There’s No Stopping Them,” Graham P. Collins, Scientific American, October 2002.)

The only exception is in the case of perpetual motion machines; a patent application for one of these must include a working model. This hasn’t stopped some inventors from obtaining patents for other types of limitless energy, however. See US 6,362,718, Motionless Electromagnetic Generator. The summary of the patent states: “It is a first objective of the present invention to provide a magnetic generator which a need for an external power source during operation of the generator is eliminated.” In order words, once you start it up with a battery, it will continue to run long afterward after the battery has been disconnected. (“Selling the Free Lunch; Perpetual Motion Has Changed its Name But Not Its Methods,” Graham P. Collins, Scientific American, November 2002.) “In an infamous case that dragged on for years in the courts during the 1980s, Joseph W. Newman sued the patent office to try to reverse the rejection of his Energy Generation System Having Higher Energy Output Than Input. A court-appointed "special master" concluded that tests at universities had verified the excess power output, and it took new court-ordered tests by the National Bureau of Standards (what is now NIST) to establish that the machine's efficiency never exceeded 80 percent.” (Collins, November 2002).

According to one website (http://www.lib.utexas.edu/engin/patent-tutorial/myths.htm), PTO auditors have estimated that 10% of existing American patents are invalid, a large portion because they don’t work.

TRADEMARKS

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.

There are three basic areas of research related to trademarks: domain names (including cybersquatting), common law, and registered marks, including trade names and service marks.

Domain names and Cybersquatting and Bad Faith Issues

Here are websites that are useful when researching the owners of domain names and issues related to cybersqatting:

www.networksolutions.com

www.betterwhois.com

www.domainsurfer.com

www.nameprotect.com

www.icann.org/udrp/udrpdec.htm – This site allows text searching of UDRP (Uniform Domain Dispute Resolution Process) decisions; you can determine if a domain name holder has been found to have acted in bad faith in other domain name cases.

www.archive.org – This is the wayback machine, which allows you to view old and archived versions of websites.

Dialog’s File 225, Domain Names, provides “comprehensive” information on domain names.

Common law research

Much of trademark law is concerned with common law rights; unlike patents, a mark or trade name owner need not obtain state or federal trademark registration in order to have established rights to the mark or name. When researching trademarks (including service marks or trade names) you would usually want to do a common law search along with searching state and federal trademark registrations.

A common law search usually focuses on whether or not a name or mark has been used in business. You can do a lot of this research with free resources – search engines, phone books, etc. You might also look at news articles, business databases like Hoovers or D&B, public records, domain names, etc.

Trademark Research Sources

Dialog has a US federal trademarks file (226), a state trademarks file (246), and numerous files for trademarks of foreign countries.

Lexis provides the same information

SAEGIS (www.saegis.com) is Thomson & Thomson’s electronic trademark service for trademark searching, registering and maintenance. Much of the material found on SAEGIS is also available on Dialog (both are owned by Thomson). SAEGIS has trademark specialists who will conduct searches for you. SAEGIS also provides trademark monitoring services.

Nerac, Optipat, Reedfax and Micropatent also provide trademark search services.

Trademark records are much shorter than patents:

DIALOG(R)File 226:TRADEMARKSCAN(R)-US FED

(c) 2003 Thomson & Thomson. All rts. reserv.

          06314811    * TRADEMARK IMAGE AVAILABLE *

GOOGLE    Stylized Letters

          INTL CLASS:   9 (Electrical & Scientific Apparatus)

                       11 (Environmental Control Apparatus)

                       12 (Vehicles)

                       16 (Paper Goods & Printed Matter)

                       18 (Leather Goods)

                       21 (Housewares & Glass)

                       25 (Clothing)

                       28 (Toys & Sporting Goods)

                       35 (Advertising & Business Services)

                       38 (Communications Services)

                       42 (Scientific, technological & legal services)

          U.S. CLASS:   1 (Raw Or Partly Prepared Materials)

                        2 (Receptacles)

                        3 (Baggage, Animal Equipment, Portfolios,

                          Pocketbooks)

                        5 (Adhesives)

                       13 (Hardware, Plumbing, Steam-fitting Supplies)

                       19 (Vehicles)

                       21 (Electrical Apparatus, Machines & Supplies)

                       22 (Games, Toys, & Sporting Goods)

                       23 (Cutlery, Machines, & Tools, Parts Therof)

                       26 (Measuring & Scientific Appliances)

                       29 (Brooms, Brushes, & Dusters)

                       30 (Crockery, Earthenware, & Porcelain)

                       31 (Filters & Refrigerators)

                       33 (Glassware)

                       34 (Heating, Lighting, & Ventilating Apparatus)

                       35 (Belting, Hoses, Machines Packing, Nonmetallic

                          Tire)

                       36 (Musical Instruments & Supplies)

                       37 (Paper & Stationery)

                       38 (Prints & Publications)

                       39 (Clothing)

                       40 (Fancy Goods, Furnishings, & Notions)

                       41 (Canes, Parasols, & Umbrellas)

                       44 (Dental, Medical & Surgical Appliances)

                       50 (Merchandise Not Otherwise Classified)

                      100 (Miscellaneous Service Marks)

                      101 (Advertising & Business Services)

                      102 (Financial & Insurance Services)

                      104 (Communications Services)

          STATUS: Pending; Revived - Awaiting Further Action

          GOODS/SERVICES: (INT. CL. 9) COMPUTER SOFTWARE FOR SEARCHING,

            COMPILING, INDEXING AND ORGANIZING INFORMATION ON COMPUTER

            NETWORKS; COMPUTER HARDWARE, COMPUTER SOFTWARE FOR SEARCHING,

            COMPILING, INDEXING, AND ORGANIZING INFORMATION WITHIN

            INDIVIDUAL WORKSTATIONS,  PERSONAL COMPUTERS; COMPUTER SOFTWARE

            FOR ELECTRONIC MAIL AND WORKGROUP COMMUNICATIONS OVER COMPUTER

            NETWORKS; COMPUTER SOFTWARE FOR CREATING INDEXES OF

            INFORMATION, INDEXES OF WEB SITES AND INDEXES OF OTHER

            INFORMATION RESOURCES; MOUSE PADS,  CALCULATORS (INT. CL. 11)

            FLASHLIGHTS, LAMPS (INT. CL. 12) LICENSE PLATE FRAMES AND

            HOLDERS (INT. CL. 16) BOOKS, NOTEBOOKS, PENS, GREETING CARDS,

            STICKERS, DECALS (INT. CL. 18) BAGS, NAMELY, TOTE BAGS, DUFFLE

            BAGS, BACKPACKS; LUGGAGE TAGS;  UMBRELLAS (INT. CL. 21) MUGS,

            TUMBLERS (INT. CL. 25) CLOTHING, NAMELY, SHIRTS, T-SHIRTS,

            VESTS, HATS, CAPS, BOXER SHORTS; CHILDREN'S CLOTHING, NAMELY,

            T-SHIRTS (INT. CL. 28) TOYS AND SPORTING EQUIPMENT, NAMELY,

            MODEL TRAINS, PLASTIC EXERCISE BALLS,  PLASTIC TOY FIGURES

            (INT. CL. 35) ELECTRONIC RETAILING SERVICES VIA COMPUTER

            FEATURING MOUSE PADS, CALCULATORS, FLASHLIGHTS, LAMPS, LICENSE

            PLATE FRAMES AND HOLDERS, BOOKS, NOTEBOOKS, PENS, GREETING

            CARDS, STICKERS, DECALS, TOTE BAGS, DUFFLE BAGS,  BACKPACKS,

            LUGGAGE TAGS, UMBRELLAS, MUGS, TUMBLERS, SHIRTS, T-SHIRTS,

            MODEM CORDS, TOYS, VESTS, CAPS, HATS, AND OTHER CLOTHING ITEMS;

            PROVIDING AN ON-LINE SEARCHABLE DATABASE FEATURING MOUSE PADS,

            CALCULATORS, FLASHLIGHTS, LAMPS, LICENSE PLATE  FRAMES AND

            HOLDERS, BOOKS, NOTEBOOKS, PENS, GREETING CARDS, STICKERS,

            DECALS, TOTE BAGS, DUFFLE BAGS, BACKPACKS, LUGGAGE TAGS,

            UMBRELLAS, MUGS, TUMBLERS, SHIRTS, T-SHIRTS, MODEM CORDS, TOYS,

            VESTS, CAPS, HATS, AND OTHER CLOTHING ITEMS (INT. CL. 38)

            PROVIDING ELECTRONIC MAIL AND WORKGROUP COMMUNICATIONS SERVICES

            OVER COMPUTER NETWORKS; PROVIDING MULTIPLE USER ACCESS TO

            PROPRIETARY COLLECTIONS OF INFORMATION BY MEANS OF GLOBAL

            COMPUTER INFORMATION NETWORKS (INT. CL. 42) COMPUTER SERVICES,

            NAMELY, PROVIDING SOFTWARE INTERFACES AVAILABLE OVER A NETWORK

            IN ORDER TO CREATE PERSONALIZED ON-LINE INFORMATION SERVICES;

            EXTRACTION AND RETRIEVAL OF INFORMATION AND DATA MINING BY

            MEANS OF GLOBAL COMPUTER NETWORKS; CREATING INDEXES OF

            INFORMATION, INDEXES OF WEB SITES AND INDEXES OF OTHER

            INFORMATION SOURCES IN CONNECTION WITH GLOBAL COMPUTER NETWORK;

            PROVIDING INFORMATION FROM SEARCHABLE INDEXES AND DATABASES OF

            INFORMATION, INCLUDING TEXT, ELECTRONIC DOCUMENTS, DATABASES,

            GRAPHIC AND AUDIO VISUAL INFORMATION, BY MEANS OF GLOBAL

            COMPUTER INFORMATION NETWORKS

          SERIAL NO.: 76-314,811

          FIRST USE: April 2001 (Intl Class 9)

                     January 1999 (Intl Class 11)

                     January 1999 (Intl Class 12)

                     January 1999 (Intl Class 16)

                     January 1999 (Intl Class 18)

                     January 1999 (Intl Class 21)

                     January 1999 (Intl Class 25)

                     January 1999 (Intl Class 28)

                     July 31, 1999 (Intl Class 35)

                     September 1997 (Intl Class 38)

                     September 1997 (Intl Class 42)

          FIRST COMMERCE: December 11, 2000 (Intl Class 9)

                          January 1999 (Intl Class 11)

                          January 1999 (Intl Class 12)

                          January 1999 (Intl Class 16)

                          January 1999 (Intl Class 18)

                          January 1999 (Intl Class 21)

                          January 1999 (Intl Class 25)

                          January 1999 (Intl Class 28)

                          July 31, 1999 (Intl Class 35)

                          September 1997 (Intl Class 38)

                          September 1997 (Intl Class 42)

          FILED: September 18, 2001

          ORIGINAL APPLICANT: GOOGLE INC. (California Corporation), 2400

            BAYSHORE PARKWAY, MOUNTAIN VIEW, CA (California), 94043, USA

            (United States of America)

          LINING: THE FIRST LETTER "G" IS BLUE; THE SECOND LETTER "O" IS

            RED; THE THIRD LETTER "O" IS YELLOW; THE FOURTH LETTER "G" IS

            BLUE; THE FIFTH LETTER "L" IS GREEN; AND THE SIXTH LETTER "E"

            IS RED.

          FILING CORRESPONDENT: JULIA ANNE MATHESON , ROSE HAGAN, GOOGLE

            INC., 2400 BAYSHORE PARKWAY, MOUNTAIN VIEW CA 94043

Very few trademark records are longer than three pages or so (the Google trademark record is pretty long).

All the trademark search databases I know of include images and drawings; these are very important in trademark research, of course, because part of a trademark is its design.

COPYRIGHTS

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. (http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm)

Researching copyright is pretty simple; either a work has been registered with the copyright office or it hasn’t. The U.S. Copyright Office is the only entity that can register copyrights – there is no such thing as state copyright protection. And just because a work has not been registered does not mean it isn’t copyrighted; but that’s a legal discussion and I’m not a lawyer.

For basic information on copyright law and how to register a work, go to the Copyright Office homepage at www.loc.gov/copyright.

The Copyright office maintains a searchable database of its records and it isn’t bad (it’s certainly better than in the old days, when you had to telnet into the site and it took forever to execute a search).

Dialog has a database of copyright registrations in File 120; the data comes directly from the Copyright Office and is updated weekly.

The advantage of using Dialog searching for copyright registrations vs. the copyright office is the same as the PTO website issue – flexibility of searching and the ease and speed of manipulating results.

Additional resources, guides, etc., including fun stuff

Please see the document attached to this guide for a very thorough guide to web resources for trademark law.

Dialog has put their course workbooks on the web in PDF format (http://training.dialog.com/sem_info/courses); the workbooks deal with Dialog searching but they also a lot of explanatory information about patents and trademarks, and they are available to anyone.

The International Trademark Association has a website at www.inta.org; it has a lot of information on the basics of trademark law.

Wacky Patent of the Month page: http://www.colitz.com/site/wacky.htm

Delphion’s Gallery of Obscure Patents: http://www.delphion.com/gallery

[1] This used to be the free IBM patent database. Ah, the old days.

[2] Unless otherwise noted, all definitions contained in this paper come from the United States Patent and Trademark Office website at www.uspto.gov.

PATENTS

Searching and retrieving patents

Non-U.S. Patents

Obtaining Copies of Patents

prior art

Maintenance Fees

Patent Families

Claims: define the patent and are what is legally enforceable in the invention

Searching Patent Applications

TRADEMARKS

COPYRIGHTS