Kim Martin : Using the Open Web for IP Practice


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  • PAIR stands for Patent Application Information Retrieval – Search PUBLISHED patents and applications by number only!!! If not published it will not be available unless is Private PAIR and is your own application. Access to transaction information showing where the application or patent is in the process, location of the file, fees paid, attorney, patent examiner, inventor information, contiuty data such as children reexams, and continuations File histories – for electronic filings - include all the information about the patent including office actions, replies, application information, prior art patents – no non patent literature available because of copyrights Assignment database is the most-to-date information on patent assignments – the information is not in the PAIR system – basic information about the type of assignment assignee and assignor and the reel/frame number to order the documents behind the entry – does not have document online, search by name, number – Please note it is not a requirement to file an assignment with the PTO but it is good idea to do it for records. – licensing, collateral, assignment between companies, company name change… Official Gazette is available online only – not in paper and only the last 4 weeks are available online Manuals – Manual of Patent examination procedure – current and historical – because need the MPEP from when the patent was filed for litigation purposes Patent and applications full text searching – two separate database –they are indexed – Can only search full text 1976-forward pre 1976 you need patent number or search by classification – there are TIFF files of patents back to 1790.
  • Has free searching of over 70 million patents from 80+ countries most have English abstracts available if there is an equivalent patent in English in the Patent Family Includes INPADOC family information – INPADOC compiled patents from over 80+ countries and puts together files of related patents to create a family. The relation between the patents is based on priority numbers (is one or more applications for which priority rights are claimed) Includes a basic abstract and basic legal status for patents in the family for some countries – not all have included the information to be available There are a lot of full text PDF foreign patents available for download – in the original language of the patent filing – abstracts can be in english in the record if there is an English language patent in the family Legal status consists of what stage a patent application is in, sometimes assignment information, if cancelled the reason There are links in the EP and WO patent records to the register files which include information about the history of that patent application there is also a link to the documents that have been filed regarding the patent similar to the US patent file history. - Sometimes it is a good place to locate strange patent application numbers that the EP or WO claim as priority because they need to file them with the register
  • WIPO LEX is a database that contains the about 10000 ip laws and treaties form over 200 countries, Each country profile includes the current laws with the dates listed for all areas of IP including patents, copyrights, trademarks, computer related technologies, a list of any international treaties they are party to and links to the IP office The database also includes the text of international and regional treatise related to IP with news on treaties available on the search page There is a full text search function that allows you to search to whole database for information On the main page of the WIPO LEX site there is a news feed listing IP related international news such as changes to the laws in a country The information is in English where available so it is a great place to look for IP laws in other countries
  • The Japanese patent office website can be difficult to search but it has a good amount of information available. The best features are the english abstracts from 1976 forward and the machine translations from 1993 forward Often times the japanese patent numbers can be difficult to search because they change the numbers in each stage of the process and they reuse numbers as well. I use it to locate abstracts and basic patent information For searching it is best to know at least so basic information such as owner of a patent, year of application, technology (pictures are helpful in the patents to assist in locating the correct patent) There is a database that is searchable in English for patent applications and patents – keywords, applicants, owners, classification of invention codes
  • All of these databases provide US and international patent data Innovation is Thomson Reuters patent database product – replaces delphion and micropatent search systems - it is separate from Westlaw and requires a separate subscription. It offers advanced patent searching in US and international databases with US, EP, GB, DE, WIPO, UK, CA, and Japanese, china, and korean translations. US full text searching back to 1836 advanced searching, indexing, corporate trees for US patents owners with over 50 patents, Inpadoc, multiple reporting features – added databases for scientific articles Total Patent from Lexis is similar to Innovation they have similar databases with Russia added. They have corporate affliations intrigated for corporate tree information, 194 indexed fields, multiple reporting features, courtlink dockets Both of these are the cadillacs of patent search databases Questel and Minesoft are similar to each other – they have advanced search features all of the files are patent families instead of individual patent records for each patent The systems are similar to total patent & innovation in that they offer US and international databases with advanced search features – the difference is the cost it less and the bells and whistles just a patent database. They both are looking to add other services. Dialog is one of the most powerful search databases for patents, it offers US, JP, EP, WIPO, Derwent, and Inpadoc – best indexing – several different platforms – command language driven not easy to use – most important feature is the ability to expand on an indexed field allowing you to enter a company name and expand to see what is around the name to catch misspellings, none of the other databases offer this feature – different formats for download available but not as good as innovation or total patent
  • Tess offers the ability to search for trademarks by word, owner, classifications for registered trademarks and applications. It is a basic search database good for quick information on trademarks for free Trademark Status and document retrieval is where you can check for legal status information and get the full file histories in PDF format – file histories searchable by number only The official gazette is available for the previous year and is available in paper format as well, They are used to publish applications for opposition published for opposition include the basic information including the owner, any designs or words being registered, classifications, description of goods or services, and the gazette convey official notices from the PTO as well The trademark assignment database is similar to the patent assignment database – offers the information on the assignment including the reel and frame number so that the documents can be ordered from the PTO The trademark manuals are available including and list of good and services and what classes they would fall under for registration, the TMEP in the trademark manual of examination procedure only the current editions is available. There is also a link to the TTAB which is the trademark trial and appeals board where oppositions are filed against registrations of trademarks
  • Saegis is a paid service offered from Compumark Thomson there is a database of over 50 countries full text searchable all with current status information – all countries update at different times As it is always good to look at the list of status updates You can search full text there are multiple indexed fields that can be searched, there is the ability to expand on the ownership field to catch misspellings, The trademarks have also been cross indexed such as if there is an unusual spelling of a word such as the word light spelled lite it would be cross indexed behind in the database as both spellings so it is not missed. There is also phoentic searches and letter replacements They offer screening searches throughout the world using gazette entries – there is no update to current information but it gives a good ides of what is out there – some gazettes such as from small countries in africa only publish when they have paper. Gazettes also are often just the applications so current information about registration or not available unless someone goes to the countries trademark office Saegis contains a domain name database that can be searched by the domain name only – there is currently no domain name database that searches by owner name. After 2002 when individual domain name regstries opened there are too many to create a complete database with all information, there are some incomplete records in the database if Saegis does not have access to the full record such as with the go daddy registry
  • CT Corsearch is the only real competitor to Saegis – they have very similar access to full text data from about 50 foreign countries, us federal, and state, Has up-to-date information for these countries They have indexed fields that can be searched, phoentic and vowel replacement, they also cross reference different spellings for words Can conduct full text searches and ownership searches – differences from Saegis is that there is no expanded index view of the owners Offers the ability to create different types of reports of results There is a domain name database similar to Saegis but I think it is more comprehensive and covers more registries and secondary extensions such as .tv, .co and foreign extension
  • Intellogist – free service from Landon IP that compares patent databases, there are full reports of what databases offer, current updates on changes in a database, and offer a convenience chart of comparison of major features – great place keep up to date and also to assist when purchasing a new database.
  • Legal Metrics – offers data on patent case filings in federal courts – they create reports form all courts, by judge, type of case, type of motion, time to trial – very important data when first looking into taking on a client and looking at a case by checking into the courts patent case history and what a judge will do during trial Domain name who is databases are a free way to check into who owns a domain name – all registries have who is databases to search there are is also a list of different sites in the handout that cover several registers PIUG – Patent information users group is a professional group of patent researchers from different industries including pharm, biotech, law firms, private searches, technology companies – they offer a conference, WIKI, information sessions, articles – great group to be a part of for patent searching INTA – international trademark association a professional organization for trademark professionals including attorneys, paraprofessionals, and corporations – they have a conference, articles, networking events, educational programming – most trademark attorneys have a membership Blogs that are good to watch include the trademark blog TTABlog, trade secret vault, the trademark blog, scotus blog, and the patent blog patently-o
  • Kim Martin : Using the Open Web for IP Practice

    1. 1. Online IP Research Resources Kimberly Martin Librarian, Goodwin Procter 3/23/2012 1 ©2011 Goodwin Procter LLP
    2. 2. AGENDA Patent Online Resources  Free US & International  Paid Resources  Treatises Online Trademark Online Resources  Free US & International  Paid Resources  Treatises Online Additional Resources 2
    3. 3. Patent Resources 3
    4. 4. US Patent and Trademark Office 4
    5. 5. US Patents US PAIR database  Display issued or published patent application status  Access public application image file wrapper Assignment Database Official Gazette (4 weeks) Manuals - MPEP Patent Full Text Database  Separate patent and applications searches  Search by number, quick, or advanced  Displays patents 5
    6. 6. PAIR 6
    7. 7. ESPACENET 7
    8. 8. ESPACENET Run by the European Patent Office Includes INPADOC records Access to foreign full text patents Access to legal status information Links to EP and WO register files  Has EP and WO file histories 8
    9. 9. WIPO Intellectual Property Laws and Treaties Database 9
    10. 10. WIPO LEX Profiles of member countries IP laws Covers over 200 countries IP laws  Patent, copyrights, trademarks, and other related laws International & Regional Treaties News on International IP Laws 10
    12. 12. JAPANESE PATENT OFFICE Contains English abstracts for patent publications from 1976 forward Machine translations for published applications since 1993 Search in English for patents 12
    13. 13. Additional Free Sites 13
    14. 14. Paid Services Thomson Innovation Lexis Total Patent Questel Minesoft Dialog 14
    15. 15. Treatises on Patent Law Chisum on Patents - Lexis USPQ – BNA, Lexis, & Westlaw Patent litigation – Lexis Patent Licensing – Lexis Milgrim on Licensing - Lexis Walker on Patents - Westlaw Interference Handbook – CCH/ASPEN 15
    16. 16. Trademark Resources 16
    17. 17. US Trademark Office 17
    18. 18. US Trademarks US TESS – Search Database US TSDR – Trademark Status and Document Retrieval  Legal Status for trademark  File History Official Gazette (previous 52 Weeks) US Trademark Assignments Trademark Manuals (TMEP & Acceptable Goods Manual) 18
    19. 19. SAEGIS 19
    20. 20. SAEGIS - Thomson Paid search service Covers over 50 countries in Full Text Has up-to-date status information for most countries Can conduct full searches, screening, order searches Contains Domain name search 20
    21. 21. CT Corsearch 21
    22. 22. CT Corsearch Paid search service Covers over 50 countries in Full Text Has up-to-date status information for US and some other countries Can conduct full searches, ownership searches Contains a Domain Name search 22
    23. 23. Treatises and Books on Trademark Law  McCarthy on Trademark – West  USPQ – trademark decisions – BNA  Trademark practice throughout the world - West  Trademarks throughout the world - West  TMEP – Trademark Manual Examining Procedure - USPTO  TBMP – Trademark Trial & Appeals Board manual of procedure - USPTO 23
    24. 24. Additional Resources 24
    25. 25. Domain Name Whois 25
    26. 26. International Domain Name 26
    27. 27. Literature Searching 27
    28. 28. 28
    29. 29. 29
    30. 30. FDA Documents 30
    31. 31. 31
    32. 32. Litigation 32
    33. 33. Intellogist 33
    34. 34. Additional Court Information Bureau of Justice Statistics Federal Justice Statistics Resource Center Judicial Almanac Legal News publications ITC dockets PACER Law School Publications and Law Reviews Law Firm Newsletter 34
    35. 35. Company Information Hoovers Company Websites Public SEC filings News Court Cases Blogs 35
    36. 36. Locating Agreements & Licensing SEC Filings News Court Filings Company Website Blogs University Technology Transfer Groups 36
    37. 37. Additional Resources 37
    38. 38. Questions?Online IP Resources Kimberly Martin Librarian, Goodwin Procter 3/23/2012 38 ©2011 Goodwin Procter LLP