----- ABOUT PATENT SEARCHES ----- May 20, 1997 Bruce Ross, PE, an Engineer, not an Attorney 938-3059 or 935-4891, Seattle. Email = bross@seanet.com Fax = 938-3059. Call to arrange fax connection. * A search is not legally required to file a patent application. It is generally recommended to do one because the search can help you determine just what is likely patentable within your invention. All inventions are a combination of parts, most of which are not patentable, but may be in combination to do a new and useful task. Often, only a small, but hopefully key, innovation is all that is patentable as new, useful, not obvious, and your own creation. * A search for prior art seeks to find all references describing what you are intending to claim in your patent. This includes the ENTIRE text and drawings of old and currently valid US and Foreign patents AND all published material including trade brochures, catalogs, technical articles, text books, symposiums, etc etc. Obviously, the inventor must be the guide to locate the more obscure writings. If a patent is issued, and one of these is eventually discovered, the patent can be canceled. * A search occasionally shows up someone else's current patent on the same idea. In that case, you have to decide whether your idea is defined within the claims of the other patent and whether to ignore it, obtain a license, or drop the your invention. Occasionally, the two of you can form a new business together based on your mutual interest and knowledge. Note: an expired patent is no longer enforcable. It is public domain, any one can use it, and no one can re-patent it. Expiration occurs at 17 years or at 4, 8, or 12 years if the renewal fees are not paid. I have a data base of expired patent numbers, or ask the PTO about any particular ones. * When is a search "done"?. Never!. But in practical terms, for patent application purposes, at about 1/2 to 2/3 the application cost. The Patent Office will do its own search anyway using resources and techniques not readily available to the inventor, so why to pay more than the application costs?. If you plan to have an attorney write the patent application, a little more expense is warranted. Of course, you absolutely should provide the attorney with all the information you discovered including your commentary on the differences between your invention and the patents revealed by the search. * The search is the basis for a required document called the "IDS", Information Disclosure Statement, and PTO form 1449. The IDS and 1449 are not difficult and most inventors can and should prepare it themselves. Use the guidance of you attorney for style and content. No use paying them bigggg bucks $$$ for doing a simple job. * Searches done on computers have a large potential for missing something relevant. This is because: 1. the search criteria and extent is limited by practical considerations. 2. errors in the data base. The Data bases provided by the PTO are full of errors, and some data base providers do not process all the PTO data correctly. Some errors occasionally obscure the information contained therein. 3. search engine errors and limitations, post retrieval transmission errors, edit errors can occur. 4. limited data available. 1969 to present in various forms. 5. the readily available data bases are primarily Title and Abstracts, and Classifications. Information found in the Specification is not readily available for search. 6. the abstracts and titles are written by the inventor and may use words or phrases not anticipated by the searcher. Some are totally uninformative, thus overlooked. Bad spelling and British style spelling of words hides information. Occasionally, abstracts and titles seem to be deliberately obfuscated by people who may be laying traps. 7. other peoples' patent applications filed but not issued are not available for searching and can be issued any time nullifying your application. 8. manual (eyeball) additional evaluation is tiring and difficult, something may be passed over. 9. the next step in evaluation is usually manual examination of the Gazette entry for the interesting patents found in the computer search. The Gazette has a drawing and one claim. The drawing supplied may not be indicative of exactly what, and certainly not all is in the patent. Claims are so obtusely written that it they cannot be accurately deciphered without the text. 10. examination of the full text, when available (which is not often), is very time consuming and may shoot the search budget. 11. only U.S. Patents are searched. Foreign patents and other publications are not generally searched because of cost. Even with the limitations described above and others, enough valuable information is revealed to make a search worth while. * Patent Copies. Many public and University libraries carry the Patent Gazettes which contain the same information I have supplied PLUS one drawing from the application. This is not always the most informative drawing, but is usually adequate. Patent copies can be purchases from the Patent Office for $3 each and a long wait for them to process the data, from PRE, and other commercial sources. Some libraries have Fax images of 1994, 1995, 1996, and 1997 issues on CDROMS. You may have a patent depository library near you which has the CDROMS, but may not have any way to print them. Check with the library. * Some Patent Depository Libraries: University of Washington Engineering Library, Seattle Oregon State Library, Salem University of Idaho, Moscow Z. J. Loussac Public Library, Anchorage, Alaska Hawaii State Public Library System, Honolulu Los Angeles City Library, Los Angeles, Calif. California State Library, Sacramento San Diego Public Library, San Diego, Calif Sunnyvale Patent Clearinghouse, Sunnyvale, Calif. Denver Public Library, Denver, Colorado University of Utah Mariott Library, Salt Lake PDLibraries are all open to the public. If you encounter resistance or insult for not being a student, contact the PTO. * WARRANTY / DISCLAIMER Patent Research Engineers is an engineering company staffed by engineers. We offer no Legal Advice. Anything that may appear to be Legal Advice is offered as: A. a courtesy, B. generalized business opinion, C. is based upon personal experience and/or reports of others. Such advice may not be applicable to your situations. You are cautioned to seek competent professional advice before acting upon opinions of Patent Research Engineers or its employees. Searches and analysis of documents is done under cost and resource limitations and is not expected to be complete. Furthermore, errors are known to be in the source data bases prepared by others. Patent Research Engineers does not warrant searches and work based on them for any purpose whatsoever. Patent Research Engineers Inc and/or its employees are not responsible for any loss, potential or actual resulting from the application of its work. Have fun, good luck. Bruce Ross, PE =========================================================================== PATENT RESEARCH ENGINEER'S, INC. SEATTLE, WASHINGTON 206-938-3059 Email - bross@seanet.com PRE, INC. 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