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  • 1. International Journal of Computer EngineeringInternational Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),and Technology (IJCET), ISSN 0976Sep6367(Print)© IAEMEISSN 0976 – 6375(Online) Volume 1, Number 2, – - Oct (2010),ISSN 0976 – 6375(Online) Volume 1 IJCETNumber 2, Sep - Oct (2010), pp. 180-191 ©IAEME© IAEME, http://www.iaeme.com/ijcet.html WEBSITE BASED PATENT INFORMATION SEARCHING MECHANISM L. Chandra Sekaran Research Scholar Anna University Coimbatore 641046 E-mail: lcskaran@gmail.com Dr. S. Balasubramanian Research Supervisor Anna University Coimbatore 641046 E-mail: s_balasubramanian@rediffmail.comABSTRACT Patent information comprises of extensive information accumulated over a longperiod of time. It is technology information enabling the acquisition of new informationin relation to idea collection and research progress when searching for new R&D themes.Also, exclusive right is protected over a specified period enabling the prevention ofentrance by competitors, and as a right to receive royalties through license agreements itis a means to create management profits through royalty revenues and prevention ofoverlapping research by determining the technology & merchandizing trends ofcompetitor corporations. It should be utilized and managed as management informationto secure product competitiveness using the monopolistic market control over the periodfor which the right is valid.Key Words: Patent Information, Novelty Search, Validity Search, Patentability Search,Bibliographic Search, Assignment Search, Right Termination Search, Patent Map.1. UTILIZATION OF PATENT INFORMATION A very broad description might be that a patent search is the process by whichprior inventions or ideas are examined, with the goal being to find information that bearsclose similarity to a given patent or proposed invention.1.1 Usage in Technology Development Patent information comprises of extensive information accumulated over a longperiod of time, so it is technology information enabling the acquisition of newinformation in relation to idea collection and research progress when searching for new 180
  • 2. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEMER&D themes. Although the technology is announced after 18 months in accordance withthe application announcement system, it enables determination of technology trends andstandards of similar firms in a particular field, and makes possible the theme selection,discovery of missing technology, and adjustments in development process of one’s firm.1.2 Usage of Rights Acquisition & Utilization When constructing the specifications, one’s own scope of right can be confirmedby taking the rights details and prior technology of other firms into consideration, and adecision in relation to patent acquisition can be reached. Patent rights of other companiescan be obstructed or their scope of right reduced through information provision,submission of objections, invalidity judgments etc. By acquiring a patent, exclusive right is protected over a specified period enablingthe prevention of entrance by competitors, and royalties can be received by permitting theright to exercise to other companies in accordance with license agreements. Whenproviding the right to exercise to another company, a corresponding right to exercise canbe gained from that company in a cross-licensing arrangement.1.3 Utilization in Management Information It is a means to create management profits through royalty revenues andprevention of overlapping research by determining the technology & merchandizingtrends of competitor corporations. It should be utilized and managed as managementinformation to secure product competitiveness using the monopolistic market controlover the period for which the right is valid.2. CATEGORY OF PATENT SEARCHINGThe following category of Patent Searching is given below: • Searching by International Application Number • Searching by Subject • Finding Company Information with Patents3. PATENT WEB SITE There are several different ways of searching for patents on the web. The twomajor patent web sites recommended by the S&E library are the Delphion IntellectualProperty Network and the United States Patent and Trademark office (USPTO). TheDelphion site has complete patents from 1974 until the present in an image format, plus 181
  • 3. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEMEsome patents issued during 1971-1973. The U.S.P.T.O Patent Database covers 1790 topresent and provides the full image of each patent as well as bibliographic data and"front-page" information. The U.S.P.T.O allows you to use several different fieldsmaking this the ideal database for in-depth searching. Table 1 shows the evaluation pattern of patent searching Search Options Delphion U.S.P.T.ODate Range 1974 – Present 1790 - PresentSearchable Fields • all fields • all fields • title • title • abstract • abstract • assignee • assignee name/city/state/country • inventor • inventor name/city/state/country • agent • primary examiner • claims • patent number • other references • issue date • U.S. references • application date • patent number • international classification number • current U.S. classification number and many more!Link to Full Patent Image YES YESLink to Prior Related Patents YES YESLink to Subsequent Related Patents YES YESCross Searching with International YES NOPatents4. PATENT SEARCH TYPES AND METHODOLOGIES There are many different types of patent searches, including Novelty searches(also called Patentability searches), Infringement searches (also called Clearance,Freedom to Operate, or Right To Use searches), Validity searches (also called Invalidity,or Enforcement Readiness searches), and State of the Art searches (also called Collectionsearches). Each type of search has a different purpose, and demands a different searchstrategy. • Novelty Searches • Validity Searches • Infringement Searches • State-of-the-art searches4.1 Novelty Searches The Novelty search, also referred to as a Patentability search, is the most commontype of patent search. Novelty searches are conducted when an inventor has an invention 182
  • 4. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEMEwhich he is interested in patenting, and wishes to determine if anyone has previouslyinvented anything similar or identical. Novelty searches generally have no dateconstraints on the prior art. In other words, if you find prior art that reads on theinvention, it does not matter whether the prior art is from yesterday or 100 years ago - itis relevant. The reason for this lack of date constraints has to do with patent law:Anything that has already been disclosed to the public, in any manner, at any time, cannotbe patented.4.2 Validity Searches The idea behind a validity search is that the Patent Office may have issued thepatent (or allowed specific claims contained in the patent) in error. Examiners are prettygood at what they do, but they are not infallible and they are often operating under severetime constraints. They may have missed a relevant piece of prior art, and this resulted inthem granting a patent with claims that never should have been allowed. The situationwith a Validity search is often that a company has made a product that infringes uponanother companys patent, and they are being sued as a result. One way to win anInfringement case is to invalidate the patent in question. If a patent search can locate priorart that reads on the claims of the patent in question, those claims will be struck from thepatent. The patent owner then loses his legal right to sue over products that wouldinfringe on those claims. Whereas a written description of the invention forms the basis of a novelty search,validity searches are done on existing patents, and that patent will serve as the disclosure. Note that with a Validity search, the idea is to find prior art that is relevant to thevalidity of the CLAIMS of the subject patent. Read that again: the CLAIMS. Not thegeneral idea. Not the entire patent, but each claim, one by one. As a result, this isnormally a more time-consuming search than a novelty search. A successful Validity search finds references that the Patent Office missed (youmight think this is rare - but it is not), and thereby provides evidence that the claimsshould have been disallowed on the grounds that someone had already come up with theinvention before the patent in question was filed. Pay close attention to the word "filed".The application filing date is very important in Validity searches because it determinesthe priority date (sometimes called a "get behind" date, for reasons that should become 183
  • 5. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEMEapparent) of the patent. It doesnt matter when a patent issued - it matters when it wasfiled. You must prove, for each claim, that inventions were known which were so similarto the claim in question, before the filing date of the present patent, that the claims shouldnot have been allowed.Lets use a fictional example to illustrate what we mean: U.S. Patent 9,999,999, in Claim 1, claims a computer chip that is faster andgenerates less heat than any other chip on the market. The patent was filed for on1/1/2002, and granted on 2/1/2003. In searching the prior art, you find two pieces of prior art that contain informationwhich is very similar to claim 1 of the subject patent. Piece "A" is an article from acomputer magazine, dated 11/01/2001. Piece "B" is a patent which was filed for on4/1/2002 and issued on 12/1/2002. Which of these references is relevant? The answer is "A". Piece "A" came beforethe filing date of the patent in question. Although Piece "B" issued before the patent inquestion, it was not filed before the patent in question. Only the filing date matters,because that documents who conceived the invention first, not who got it through theapproval process the fastest. In general, when conducting a Validity search you do not cite any prior art thathas already been cited on the front of the subject patent. This prior art in listed on thepatent because it has already been reviewed by USPTO examiners and, since the patentwas granted, the examiners obviously felt that those references were not similar enoughto the invention at hand to stop the patent from issuing. In some cases the examiners mayhave been wrong, but proving that is an uphill battle as compared to finding prior art ofwhich the examiners were unaware. Note that while it is the CLAIMS of the subject patent with which we areconcerned (in other words, we are searching on the claims), the art cited may come fromanywhere (just like in a Novelty search). Relevant art does not have to be from the claimsof other patents. Lets now revisit the idea of dependent and independent claims. Remember ourfictional example where Claim 1 read "A lighter, more aerodynamic design for a bicycle 184
  • 6. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEMErim by using an oval cross-sectional shape", and Claim 2 read "The rim of Claim 1 wherethe cross-sectional piece is formed from aluminum?". If you were doing a validity search and you had to prioritize finding prior art toinvalidate one of these claims, which would you choose? If you find prior art that invalidates Claim 1, then there is no oval rim to be madeof aluminum! Claim 2, being dependent on Claim 1, is destroyed by destroying Claim 1.For this, and other reasons, independent claims are normally the targets in a Validitysearch - it is more efficient to try and invalidate independent claims because youautomatically get the dependent ones in the process. You will know a claim isindependent if it has no reference to another claim in it.4.3 Infringement Searches Also called "Right-to-Use Searches", "Clearance Searches", or "Freedom-to-Operate Searches", the point of this type of search is to prove that a proposed product orinvention does not violate any active patents (or conversely, to at least be aware that itdoes, and make the appropriate business decision).Keep these things in mind for an Infringement search:1. You are normally only searching patents. Non-patent literature is normally notnecessary, since the issue is whether or not the client would infringe an in-force patent.2. You must carefully read the Claims of each patent you find that might be relevant.Remember, it is the Claims, not the descriptions found elsewhere in a patent, whichdetermine what it would take to infringe that patent.3. Only in-force patents are of concern, so make sure you limit your date range to the last20 years. As we have already stated, Infringement searches are generally conducted bytrying to prove that no in-force patents exist with claims that would cause the client aproblem. But, what if you are confident that such an invention or patent already does exist,but it is over 20 years old? A viable alternate in some very specific cases might be to tryand prove that the invention is in the public domain, and therefore safe to use. This wouldbe done by showing that the invention had at one time been disclosed, but that thedisclosure occurred over 20 years ago. 185
  • 7. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEME4.4 State-of-the-art searches The term "State-of-the-Art Search" often means different things to differentpeople. Therefore, if you are a professional patent searcher it is crucial to understandwhat the client is asking for before beginning this type of search (as it is with any search,but perhaps more so here). Generally, a State-of-the-Art Search is designed to quicklyallow someone to see what is currently being developed in a given field. During such asearch, the searcher picks patents representative of a specific technology, but does notcite every patent having to do with the technology, as there would be a great deal ofredundancy. However, sometimes a client may want each and every patent on a giventechnology. This type of search is more properly called a Collection Search, but the termsare often used interchangeably. Before we talk about the specifics of different patent searches, we need to define avery important patent searching concept: the "disclosure". The disclosure refers to thedocument which explains the invention or concept on which you are going to search.Depending on the search type, and your role in the patent search process, the disclosuremay take different forms. If you are an inventor conducting your own search, you might not have adisclosure at all. You might just have an idea in your mind as to what you are looking for.If you are a professional patent searcher, you will likely have a disclosure from yourclient or employer. If you are an inventor and have not written a disclosure, we suggestyou do, even if just to get your own thoughts in order - it will help you search moreeffectively. The disclosure for Novelty searches and Infringement searches describes theproposed inventions or products. The disclosure may be anything from informaldocument with rudimentary sketches of the invention to a complete patent applicationwith professional drawings, or even an existing patent. Based on the disclosure, you should be able to answer this question: What are thenovel points of this invention? The reason for this is that you are going to be searchingfor prior art relevant to the aspects of the invention that are novel - which is notnecessarily the entire invention. 186
  • 8. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEME For instance, given a disclosure about a bicycle with non-slip pedals, the points ofnovelty might be the particular shape of the pedals, or the materials that the pedals aremade of, or some type of locking mechanism that keeps your feet from coming off. Ofcourse, the disclosure may talk about bicycles in general, and the diagrams may includepictures of entire bicycles, not just pedals. That does not mean that any patent aboutbicycles is relevant. You must understand which features are common knowledge andsimply present to put the invention in context versus which features are potentiallypatentable. In a State-of-the-Art Search, the objective is often to find out what other people inthe field are doing. A State-of-the-Art search may not be based on a specific invention atall, but rather the disclosure may simply be something like "Find all patents that discussthe use of magnesium alloys in bicycle frames". The disclosure for a Validity search will normally be an existing patent. You willbe given a patent number, and you will need to look the patent up, read it, and thoroughlyunderstand the patent - particularly the Claims. While disclosures may take different forms depending on the exact situation, it isalways imperative that you know what you are looking for. It will save time, help makeyour search results concise, and help ensure that you do not miss anything relevant4.5. Bibliographic Search As the researcher is already aware of the patent number and the inventor’s name,the research can be conducted very simply and quickly. The point of this kind of researchis to find out what is protected by a particular patent number, and what patent ispossessed by a particular patent. Bibliographic search can be performed as personalbackground search, history search, and chronological search.4.6 Patentability Search Patentability search is the most general. This search is to determine whether it is asubject that can be patented, whether it is valid, whether it is original, and whether it isself-explanatory. Therefore, it is advisable that the patentability search be conductedbefore the development of the invention. The purpose of this search is to determinewhether a prior patent (prior technology) exists. The inventor can search useful prior datain preparing for patent application. The search of invention ideas or prior technology inrelation to patents already applied can enable the application decision after confirming 187
  • 9. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEMEthe possibility of acquiring the rights, and is the most fundamental utilization method towiden and strengthen rights acquisition by enabling the adjustment of the claim.4.7 Continuing Search Continuing search is also called monitoring search and is mainly used todetermine patent trends in the interested filed or competitor trends. It also includes themonitoring search of legal status etc. in relation to a specific case.4.8 Assignment Search When a patent is assigned to another person or company, it is the same thing as asale despite the use of other terminology. For example, whether it is an individual or acompany, the buyer is called the assignee and the seller, such as the investor, is called theassignor. The purpose of this search is to determine the legal owner of the relevant patent.4.9 Rights Termination Search Unlike the infringement search which focuses on non-terminated patents, thissearch focuses on terminated patents. This search determines the potential legal outcomesof reproducing processes, products, and designs of other companies of which theexclusive rights have been terminated.4.10 Patent Map This is a search of prior patent information in relation to new generation R&Dusing various types of patent information utilization methods. It is a precise andcomprehensive method which can even be applied to highly advanced utilization methodsand is used for the purposes of technology information utilization for technologydevelopment trends, technology extension situations, competitor trends, marketparticipation potential, product development flow, and determining technology scope &the utilization of rights information for patent acquisition potential etc. throughcollection, extraction, analysis, and mapping of relevant data to enable the setting ofR&D direction, overlap investment prevention, missing technology discovery, priorprevention of patent disputes etc. by determining the proliferation status of thetechnology.5. WHO NEEDS A PATENT SEARCH?There are many possible reasons for need a patent search. Some examples are listedbelow: 188
  • 10. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEME • An inventor would like to make sure his invention is unique before he spends time and money to obtain a patent (this would be a Novelty search). • A company would like to produce a product, and although they do not wish to patent the product themselves, they want to make sure that they do not get sued by someone else that might have already patented the idea (this would be an Infringement search). • Company A is making a product, and is being sued by Company B, which believes it holds a patent on the product, and Company A would like to prove that Company Bs patent is invalid (this would be a Validity search). • A researcher would like a comprehensive listing of the most recent patents in a certain field, to help guide his research (this would be a State-of-the-Art search).6. SYNTAX EXAMPLES OF PATENT RESEARCHData Element Description Find all documents containing the word cat in any ofcat the main text fields (title, abstract, or specification/description). Find all documents containing the word cat in only theABST/cat abstract. Find all documents containing both the word cat and the word dog in any of the main text fields (title,cat AND dog abstract, or specification/description). The two words may be in different fields. Find all documents containing the word cat in theABST/cat AND dog abstract, and the word dog in any of the main text fields (title, abstract, or specification/description). Find all documents containing the word cat in theABST/cat AND APD/1/1/2000->1/1/2005 abstract which have an application date between Jan 1, 2000 and Jan 1, 2005. Find all documents containing the word cat in the title, but do not include any documents which have theTTL/cat NOT dog word dog in any of the main text fields (title, abstract, or specification/description). Find all documents that contain either the word cat or the word dog, and which also contain either the word(cat OR dog) AND (leash OR fence) leash or the word fence. Note that without the parenthesis this query would be interpreted in an entirely different manner. Find all forms of the word electroplate, including[with word stemming on] electroplate electropated, electroplating, and electroplater. 189
  • 11. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEME Find all documents containing the word cat within 5 words of dog, in any of the main text fields (title,"cat dog"~5 abstract, or body). The 5 may be replaced with any whole number. Cat is 5 times more important to the relevancy of documents than dog. Find all documents containing theCat^5 OR dog word cat or dog but, all other things being equal, rank the documents containing cat higher. The "5" may be replaced with any whole number. Find all documents containing words starting withelectron* electron like electron, electrons, electronic, electronics etc Find all documents containing words that has only oneSu? character after su like sub, sun, sum etc7. FIELD ABBREVIATIONS Field Code Field Name Syntax Example ABST Abstract ABST/"cardboard box" APD Application Date APD/1/1/1790->1/1/2001 APN Application Serial Number APN/000001 AC Assignee City AC/"New York" ACN Assignee Country ACN/JP AN Assignee Name AN/"Doe John" AS Assignee State AS/NY ASEX Assistant Examiner ASEX/"Doe John E" AGT Attorney or Agent AGT/"Doe John E" ACLM Claim(s) ACLM/"cardboard box" CCL Current US Classification CCL/100/50 SPEC Description/Specification SPEC/"cardboard box" PRIR Foreign Priority PRIR/1/1/1990 FREF Foreign References FREF/JP1234567 ICL International Classification ICL/G06F019/00 IC Inventor City IC/"New York" ICN Inventor Country ICN/JP IN Inventor Name IN/"Doe John E" ISD Issue Date ISD/1/1/2000 IS Inventor State IS/NY OREF Other References OREF/"Cardboard Box" PARN Parent Case Information PARN/1234567 PN Patent Number PN/1234567 PEX Primary Examiner PEX/"Doe John E" TTL Title TTL/"cardboard box" REF US References REF/1234567 190
  • 12. International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 – 6367(Print),ISSN 0976 – 6375(Online) Volume 1, Number 2, Sep - Oct (2010), © IAEMECONCLUSION Patent information comprises of extensive information accumulated over a longperiod of time. It is technology information enabling the acquisition of new informationin relation to idea collection and research progress when searching for new R&D themes.Also, exclusive right is protected over a specified period enabling the prevention ofentrance by competitors, and as a right to receive royalties through license agreements itis a means to create management profits through royalty revenues and prevention ofoverlapping research by determining the technology & merchandizing trends ofcompetitor corporations.REFERENCES1. “From invention to commercialization” Intellectual Property Office, 20022. www.kipo.go.kr Intellectual Property Office3. “Patent search guide using the internet” Intellectual Property Office, 20014. “Patent map guide” Intellectual Property Office, 1999 191

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