International Journal of Computer Engineering International Journal of Computer Engineering and Technology (IJCET), ISSN 0976 6367(Print), and

d Technology (IJCET), ISSN 0976Sep6367(Print) IAEME ISSN 0976 6375(Online) Volume 1, Number 2, - Oct (2010),
ISSN 0976 6375(Online) Volume 1 Number 2, Sep - Oct (2010), pp. 180-191

IJCET

IAEME, http://www.iaeme.com/ijcet.html

IAEME

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.com

ABSTRACT
Patent information comprises of extensive information accumulated over a long period of time. It is technology information enabling the acquisition of new information in 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 of entrance by competitors, and as a right to receive royalties through license agreements it is a means to create management profits through royalty revenues and prevention of overlapping research by determining the technology & merchandizing trends of competitor corporations. It should be utilized and managed as management information to secure product competitiveness using the monopolistic market control over the period for 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 which prior inventions or ideas are examined, with the goal being to find information that bears close similarity to a given patent or proposed invention.

1.1 Usage in Technology Development

Patent information comprises of extensive information accumulated over a long period of time, so it is technology information enabling the acquisition of new information in relation to idea collection and research progress when searching for new 180

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R&D themes. Although the technology is announced after 18 months in accordance with the application announcement system, it enables determination of technology trends and standards of similar firms in a particular field, and makes possible the theme selection, discovery of missing technology, and adjustments in development process of ones firm.

1.2 Usage of Rights Acquisition & Utilization

When constructing the specifications, ones own scope of right can be confirmed by taking the rights details and prior technology of other firms into consideration, and a decision in relation to patent acquisition can be reached. Patent rights of other companies can 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 enabling the prevention of entrance by competitors, and royalties can be received by permitting the right to exercise to other companies in accordance with license agreements. When providing the right to exercise to another company, a corresponding right to exercise can be 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 and prevention of overlapping research by determining the technology & merchandizing trends of competitor corporations. It should be utilized and managed as management information to secure product competitiveness using the monopolistic market control over the period for which the right is valid.

2. CATEGORY OF PATENT SEARCHING

The following category of Patent Searching is given below: Searching by International Application Number Searching by Subject Finding Company Information with Patents

3. PATENT WEB SITE

There are several different ways of searching for patents on the web. The two major patent web sites recommended by the S&E library are the Delphion Intellectual Property Network and the United States Patent and Trademark office (USPTO). The Delphion site has complete patents from 1974 until the present in an image format, plus

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some patents issued during 1971-1973. The U.S.P.T.O Patent Database covers 1790 to present 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 fields making this the ideal database for in-depth searching. Table 1 shows the evaluation pattern of patent searching
Search Options Date Range Searchable Fields Delphion 1974 Present all fields title abstract assignee inventor agent claims other references U.S. references patent number U.S.P.T.O 1790 - Present all fields title abstract assignee name/city/state/country inventor name/city/state/country primary examiner patent number issue date application date international classification number current U.S. classification number and many more! YES YES YES NO

Link to Full Patent Image Link to Prior Related Patents Link to Subsequent Related Patents Cross Searching with International Patents

YES YES YES YES

4. 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 Collection searches). Each type of search has a different purpose, and demands a different search strategy. Novelty Searches Validity Searches Infringement Searches State-of-the-art searches

4.1 Novelty Searches

The Novelty search, also referred to as a Patentability search, is the most common type of patent search. Novelty searches are conducted when an inventor has an invention

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which he is interested in patenting, and wishes to determine if anyone has previously invented anything similar or identical. Novelty searches generally have no date constraints on the prior art. In other words, if you find prior art that reads on the invention, it does not matter whether the prior art is from yesterday or 100 years ago - it is 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, cannot be patented.

4.2 Validity Searches

The idea behind a validity search is that the Patent Office may have issued the patent (or allowed specific claims contained in the patent) in error. Examiners are pretty good at what they do, but they are not infallible and they are often operating under severe time constraints. They may have missed a relevant piece of prior art, and this resulted in them granting a patent with claims that never should have been allowed. The situation with a Validity search is often that a company has made a product that infringes upon another company's patent, and they are being sued as a result. One way to win an Infringement case is to invalidate the patent in question. If a patent search can locate prior art that reads on the claims of the patent in question, those claims will be struck from the patent. The patent owner then loses his legal right to sue over products that would infringe 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 the validity of the CLAIMS of the subject patent. Read that again: the CLAIMS. Not the general idea. Not the entire patent, but each claim, one by one. As a result, this is normally a more time-consuming search than a novelty search. A successful Validity search finds references that the Patent Office missed (you might think this is rare - but it is not), and thereby provides evidence that the claims should have been disallowed on the grounds that someone had already come up with the invention 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 determines the priority date (sometimes called a "get behind" date, for reasons that should become

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apparent) of the patent. It doesn't matter when a patent issued - it matters when it was filed. You must prove, for each claim, that inventions were known which were so similar to the claim in question, before the filing date of the present patent, that the claims should not have been allowed. Let's 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 and generates less heat than any other chip on the market. The patent was filed for on 1/1/2002, and granted on 2/1/2003. In searching the prior art, you find two pieces of prior art that contain information which is very similar to claim 1 of the subject patent. Piece "A" is an article from a computer magazine, dated 11/01/2001. Piece "B" is a patent which was filed for on 4/1/2002 and issued on 12/1/2002. Which of these references is relevant? The answer is "A". Piece "A" came before the filing date of the patent in question. Although Piece "B" issued before the patent in question, 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 the approval process the fastest. In general, when conducting a Validity search you do not cite any prior art that has already been cited on the front of the subject patent. This prior art in listed on the patent because it has already been reviewed by USPTO examiners and, since the patent was granted, the examiners obviously felt that those references were not similar enough to the invention at hand to stop the patent from issuing. In some cases the examiners may have been wrong, but proving that is an uphill battle as compared to finding prior art of which the examiners were unaware. Note that while it is the CLAIMS of the subject patent with which we are concerned (in other words, we are searching on the claims), the art cited may come from anywhere (just like in a Novelty search). Relevant art does not have to be from the claims of other patents. Let's now revisit the idea of dependent and independent claims. Remember our fictional example where Claim 1 read "A lighter, more aerodynamic design for a bicycle

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rim by using an oval cross-sectional shape", and Claim 2 read "The rim of Claim 1 where the cross-sectional piece is formed from aluminum?". If you were doing a validity search and you had to prioritize finding prior art to invalidate 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 made of 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 Validity search - it is more efficient to try and invalidate independent claims because you automatically get the dependent ones in the process. You will know a claim is independent if it has no reference to another claim in it.

4.3 Infringement Searches

Also called "Right-to-Use Searches", "Clearance Searches", or "Freedom-toOperate Searches", the point of this type of search is to prove that a proposed product or invention does not violate any active patents (or conversely, to at least be aware that it does, 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 not necessary, 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, which determine 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 last 20 years. As we have already stated, Infringement searches are generally conducted by trying to prove that no in-force patents exist with claims that would cause the client a problem. 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 try and prove that the invention is in the public domain, and therefore safe to use. This would be done by showing that the invention had at one time been disclosed, but that the disclosure occurred over 20 years ago.

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4.4 State-of-the-art searches

The term "State-of-the-Art Search" often means different things to different people. Therefore, if you are a professional patent searcher it is crucial to understand what 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 quickly allow someone to see what is currently being developed in a given field. During such a search, the searcher picks patents representative of a specific technology, but does not cite every patent having to do with the technology, as there would be a great deal of redundancy. However, sometimes a client may want each and every patent on a given technology. This type of search is more properly called a Collection Search, but the terms are often used interchangeably. Before we talk about the specifics of different patent searches, we need to define a very important patent searching concept: the "disclosure". The disclosure refers to the document 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 disclosure may take different forms. If you are an inventor conducting your own search, you might not have a disclosure 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 your client or employer. If you are an inventor and have not written a disclosure, we suggest you do, even if just to get your own thoughts in order - it will help you search more effectively. The disclosure for Novelty searches and Infringement searches describes the proposed inventions or products. The disclosure may be anything from informal document with rudimentary sketches of the invention to a complete patent application with professional drawings, or even an existing patent. Based on the disclosure, you should be able to answer this question: What are the novel points of this invention? The reason for this is that you are going to be searching for prior art relevant to the aspects of the invention that are novel - which is not necessarily the entire invention.

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For instance, given a disclosure about a bicycle with non-slip pedals, the points of novelty might be the particular shape of the pedals, or the materials that the pedals are made of, or some type of locking mechanism that keeps your feet from coming off. Of course, the disclosure may talk about bicycles in general, and the diagrams may include pictures of entire bicycles, not just pedals. That does not mean that any patent about bicycles is relevant. You must understand which features are common knowledge and simply present to put the invention in context versus which features are potentially patentable. In a State-of-the-Art Search, the objective is often to find out what other people in the field are doing. A State-of-the-Art search may not be based on a specific invention at all, but rather the disclosure may simply be something like "Find all patents that discuss the use of magnesium alloys in bicycle frames". The disclosure for a Validity search will normally be an existing patent. You will be given a patent number, and you will need to look the patent up, read it, and thoroughly understand the patent - particularly the Claims. While disclosures may take different forms depending on the exact situation, it is always imperative that you know what you are looking for. It will save time, help make your search results concise, and help ensure that you do not miss anything relevant

4.5. Bibliographic Search

As the researcher is already aware of the patent number and the inventors name, the research can be conducted very simply and quickly. The point of this kind of research is to find out what is protected by a particular patent number, and what patent is possessed by a particular patent. Bibliographic search can be performed as personal background search, history search, and chronological search.

4.6 Patentability Search

Patentability search is the most general. This search is to determine whether it is a subject that can be patented, whether it is valid, whether it is original, and whether it is self-explanatory. Therefore, it is advisable that the patentability search be conducted before the development of the invention. The purpose of this search is to determine whether a prior patent (prior technology) exists. The inventor can search useful prior data in preparing for patent application. The search of invention ideas or prior technology in relation to patents already applied can enable the application decision after confirming 187

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the possibility of acquiring the rights, and is the most fundamental utilization method to widen 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 to determine patent trends in the interested filed or competitor trends. It also includes the monitoring 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 a sale despite the use of other terminology. For example, whether it is an individual or a company, the buyer is called the assignee and the seller, such as the investor, is called the assignor. 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, this search focuses on terminated patents. This search determines the potential legal outcomes of reproducing processes, products, and designs of other companies of which the exclusive rights have been terminated.

4.10 Patent Map

This is a search of prior patent information in relation to new generation R&D using various types of patent information utilization methods. It is a precise and comprehensive method which can even be applied to highly advanced utilization methods and is used for the purposes of technology information utilization for technology development trends, technology extension situations, competitor trends, market participation potential, product development flow, and determining technology scope & the utilization of rights information for patent acquisition potential etc. through collection, extraction, analysis, and mapping of relevant data to enable the setting of R&D direction, overlap investment prevention, missing technology discovery, prior prevention of patent disputes etc. by determining the proliferation status of the technology.

5. WHO NEEDS A PATENT SEARCH?

There are many possible reasons for need a patent search. Some examples are listed below:

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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 B's 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 RESEARCH

Data Element cat Description Find all documents containing the word 'cat' in any of the main text fields (title, abstract, or specification/description). Find all documents containing the word 'cat' in only the abstract.

ABST/cat

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 the ABST/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 the ABST/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 the 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 '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 'electropated', 'electroplating', and 'electroplater.'

TTL/cat NOT dog

(cat OR dog) AND (leash OR fence)

[with word stemming on] electroplate

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"cat dog"~5

Cat^5 OR dog

electron* Su?

Find all documents containing the word 'cat' within 5 words of 'dog', in any of the main text fields (title, 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 the 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 with electron like electron, electrons, electronic, electronics etc Find all documents containing words that has only one character after 'su' like sub, sun, sum etc

7. 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

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CONCLUSION
Patent information comprises of extensive information accumulated over a long period of time. It is technology information enabling the acquisition of new information in 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 of entrance by competitors, and as a right to receive royalties through license agreements it is a means to create management profits through royalty revenues and prevention of overlapping research by determining the technology & merchandizing trends of competitor corporations.

REFERENCES
1. From invention to commercialization Intellectual Property Office, 2002 2. www.kipo.go.kr Intellectual Property Office 3. Patent search guide using the internet Intellectual Property Office, 2001 4. Patent map guide Intellectual Property Office, 1999

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