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Issues in Science and Technology Librarianship Spring 2009

DOI:10.5062/F48W3B8D

URLs in this document have been updated. Links enclosed in{curly brackets}have been changed. If a replacement link waslocated, the new URL was added and the link is active; if a newsite could not be identified, the broken link was removed.

Tips from the Experts

A Short Course on Patent Reference for Science

and Technology Librarians

Linda ShackleCoordinator for Science & Engineering Services/Engineering Librarian

Noble Science & Engineering LibraryArizona State University

Tempe, [email protected]

Copyright 2009, Linda Shackle. Used with permission.

Now that the full text of patents as well as patent searching tools are available for free

on the Internet, every librarian who is responsible for assisting people with science andtechnology information should have a basic knowledge of this aspect of intellectualproperty. Whether a school librarian helping children discover the world of inventions,an academic librarian assisting an engineering major on a design assignment, the publiclibrarian demonstrating how an independent inventor may do a patentability search, ora special librarian performing a patent search for the company's legal unit, patents arean integral part of the STM literature. At minimum, library staff should be able torecognize a patent citation and, depending on availability, to find the full text in one ofthe free patent databases on the web. Ideally, staff should be as comfortable withpatents as they are with other science and engineering topics; they should know whatresources to consult, and how to use those resources.

This article is an introduction to patent reference for librarians who work in U.S.libraries and will give a foundation on which to build knowledge and skills in this area.Librarians who only occasionally receive patent questions may use this as a "how-toguide" with a list of resources. Although international patents are discussed, the guide isprimarily U.S.-based, and covers what a patent is, provides basic searching techniquesin the major free patent databases on the web, and links to patent information sources.

Table of Contents

ort Course on Patent Reference for Science and Technology Librarian http://www.istl.org/09-spring/exp

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IntroductionUnited States Patents

Utility PatentsDesign PatentsPlant PatentsApplications

International PatentsKind Codes

WO & PCT applicationsParts of a Patent

Front PageDrawingsSpecificationsClaims

Further Reading About Patents

Searching for PatentsThe Free Web Databases and Their Content

Searching for Patents by...NumberInventorAssignee(corporate entity)Subject

More on Patent SearchingChemical PatentsPatent Classification SchemesPrior Art(patentability searching)

Finding Other Patent Information

AssignmentsCitation DataEnglish TranslationsMaintenance Payments & ExpirationStatistics

The "Legal Advice" Issue

Free On-the-Web Resources Mentioned in this Guide

Introduction

Patents are part of the legal area called intellectual property that also includestrademarks, trade secrets, and copyright. A patent is essentially a grant from thegovernment, or a regional organization, giving the inventor the right to exclude othersfrom making the invention for a specified period; as property, patents may be bought,sold, licensed, or bequeathed. The patenting process makes technological advancesknown to the public so improvement of the technology may occur while at the sametime protecting the inventor from others manufacturing his invention. On the flip side,


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during the protection period consumers may have fewer options for obtaining acommodity and may pay higher prices.

Beware: The words grant and patent are interchangeable so sometimes people will referto land grants as land patents, railroad land patents, or railroad patents; these "patents"are real estate grants, not intellectual property grants.

In order to receive a patent, the invention must be useful, novel, and non-obvious.

Useful means that the invention must work and have purpose; ideas cannot bepatented.Novel indicates that the invention must be new and not previously known or usedby others.Non-obvious requires that the invention not be so basic that anyone with anordinary knowledge of the field would come up with it.

United States

In the United States, there are three primary types of patents:

Uti lity Patents

This is the largest category of U.S. patents and encompasses processes, machines,manufacturing and composition of matter. Utility patents cover what most people thinkof for inventions -- mechanical, electrical, and chemical creations; however, in the U.S.this patent type now also includes such things as software programs, business methods,and gene sequences.

U.S. utility patents last for 20 years from the date of application, if the maintenancefees are paid at 3.5, 7.5 and 11.5 years. Non-payment of a maintenance fee essentiallycancels the patent protection and the invention goes into the public domain early. Priorto June 8, 1995, U.S. utility patents lasted for 17 years from date ofissuance;maintenance fees were required at the same intervals.

Although the first U.S. patent was issued in 1790, the patent numbering system startedwith patent #1 in July 1836 when the first Patent Office was formed. In December1836, a fire consumed all of the records for the approximately 10,000 patents issued upuntil that time. Fewer than 3,000 of the 1790 to mid-1836 patents were restored; thesepatents have a numbering series in which an X is present before the number; hencetheir name, the "X patents."

Examples of utility patents:

US 6,988,002US 4,753,647US 4414790US 2292387US 6469USX9718

Design Patents


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These patents are for ornamental designs that are on manufactured items. The designmay be on the surface of the item or the design may be the shape of the item itself.Design patents last for 14 years from the date of issuance.

Examples of design patents:

US D569203US D506,720

Plant Patents

Plant patents are for new asexually reproduced (i.e., not produced from seeds) plants.These patents last for 20 years from date of filing.

Example of a plant patent:

US PP18897

Appl ications

U.S. patent applications filed prior to November 29, 2000 were confidential and unlessgranted patent protection, the public never saw these applications. U.S. patentapplications first went public on March 15, 2001 with the release of the PatentApplications database. Currently, inventors have the option to delay the publication oftheir patent application for 18 months or upon issuance, whichever comes first; if theinventor does not take the option to delay, the application is published immediately. Theresults of a patent application search must always be considered incomplete because ofthis potential 18-month delay. According to theUSPTO's 2008 Annual Report, onaverage, patent pendency (the time from filing to issuance) is about 32 months.

The U.S. application numbering system now has two numbering series. The more recentsystem is usually referred to as the publication number and starts with the year followedby a seven-digit number. If the number is less than 7-digits, leading zeros should beused.

Examples:

US 20060287457US 2007/0160929US 2008-0026331

The earlier numbering system is usually referred to as the serial number and starts witha two-digit "serial code" (01=first series, 02=second series, etc.) followed by a six-digitnumber.

Examples:

11/878,759(Series 11, application number 878759; also labeled as published application2008/0026331)09-967946(Series 09, application number 967946; also labeled as published application


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20020147290; issued asUS 6515150.)

International Patents

Most countries in the world have some type of intellectual property protection,however, not all issue patents and among those that do, there are variations in theexamination process and in the types of patents issued. In most countries, what the U.S.refers to as a utility patent is simply called a patent and the utility requirement (i.e.,usefulness) may be called "industrial applicability."

What is patentable may also vary among countries. Patenting software is notuniversally accepted and designs are more commonly protected via a "registry ofindustrial designs" rather than issuing patents as the United States does. In somecountries, the ornamentation may be copyrighted in addition to, or instead of,registering as an industrial design.

As with U.S. utility patents, patents from other countries are designated by thetwo-letter country code, followed by the number. To help distinguish the type of patent,and where it is in the examination process, a one-to-two character "kind code" may

appear after the patent number, sometimes in parentheses. A detailed,country-by-country listing of kind codesis available from the United Nations agency, the WorldIntellectual Property Organization (WIPO). To coordinate with the internationalcommunity and to reflect the new rule for publishing applications, the United Stateschanged its kind codes on January 2, 2001; in addition to the WIPO listing, the USPTOalso has a description of theU.S. kind codesprior to and after the 2001 change.

Examples:

US 6848122 (B1)United States (US) utility patent issued after 2000 (B1)

US 5203607 AUnited States (US) utility patent issued prior to 2001 (A).USD506720 (S1)United States (US) issued design patent (S1)DE102007028552 (A1)German (DE) unexamined patent application (A1)NL1033686 C2Netherlands (NL) issued patent (C2)

There is no overall patenting agency that issues an "international patent" for worldwideprotection, although some regional agencies exist, such as the European Patent Office,

that cover multiple countries. Consequently, inventors must file with each nationaland/or regional agency in which they want protection. Inventors do have the option offiling a single PCT (Patent Cooperation Treaty) application signaling their intent topatent in multiple countries. There are over 130 member countries/agencies for thistreaty; the "Designated States" listing on the application indicates in which countriesand/or regional agencies the inventor maybe seeking protection. In the United States,the USPTO accepts PCT applications.

The PCT application's advantage is the establishment a publication filing daterecognized by these 130+ countries. In most of these countries, if a dispute results frommultiple inventors filing for the same invention, the patent is awarded to the "first to


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file," hence the necessity to establish a filing date quickly. Even if the inventor does notfile a patent application in a designated country, the PCT application effectivelyprevents others from obtaining a patent should they file after the PCT application date.Conversely, U.S. law gives the patent to the "first to invent" frequently resulting inlengthy and expensive patent prosecutions (aka, the examination process) determiningwho was first.

PCT applications are given the WO two-letter country code and since 2004 are

assigned a number that consists of the year followed by a six-digit number (includesleading zeros as needed). The earlier number system is WO followed by the last twodigits of the year, then by a 5-6 digit number.

Examples:

2005 applicationWO2005123858 (A1)2001 applicationWO0169110 (A1)

The Parts of a Patent

Patents can be difficult to read because they are legal documents describing technologyand therefore use terminology from both the legal and technical fields. Even commonEnglish language words may have different meanings when used in patents. As anexample, try deciphering the difference between "comprising," "consisting essentiallyof," and "consisting of" from theUSPTO's glossary. Additionally, the use of generalitiesor generic terms avoids unnecessarily narrowing the scope of the patent, but results inseemingly odd and vague descriptions. For example, the term "plurality" is frequentlyused instead of specifying a number of components. A good example illustrating thestrange nature of patent terminology is the Koosh ball,US 4756529, because the title(Generally Spherical Object With Floppy Filaments to Promote Sure Capture) is so farremoved from how most people would describe this once ubiquitous toy.

Most modern day patents consist of four parts: the front page, drawings,specifications,and claims.

Front PageConsider the front page of a patent to be the bibliographic data. In the U.S., thefront page started to appear in selected patents in the early 1970s and by 1976was the standard format. The amount of information on this page varies amongcountries; the U.S. has one of the most extensive front page formats and includes:

Patent number and date of issuanceInventor's name

Inventor's address at the time of issuanceAssignee's name and address (if the inventor assigned the patent andinformed the Patent Office of such prior to issuance)Application number and date of filingU.S. class(es)/subclass(es) in which this patent was placed at the time ofissuance; prior to the 1970s only the primary U.S. Classification wasincluded.Number of claims

The following information is now available on the front page, but was either notincluded or not consistently included on pre-1970s patents:


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The International Patent classes equivalent to the U.S. classes/subclasses inwhich this patent was placedField of Search: The U.S. classes/subclasses in which the patent examinerand/or inventor looked to find similar patentsReferences Cited: Related literature such as patents, books, journal articlesPatent Examiner's nameAttorney, agent or law firm representing the inventor (if the inventoremployed one)

Abstract: A one paragraph description of the inventionNumber of drawings in the patentA single drawing representing the invention

Drawings

Drawings of the invention are usually contained on a separate page or pages ofthe patent although some chemical patents only have structures embedded withinthe specifications section. Utility patents are not required to have a drawingunless necessary to explain the invention, however, most utility patents doinclude them. All design patents, obviously, have drawings of the design. All plantpatents have "drawings" that range from either line drawings to photographs of

the plant; many of these botanical drawings and photographs are in color, butthey are reproduced only in black/white in the USPTO database; color copiesmay be obtained from the USPTO and sometimes from patent depositorylibraries. Prior to the introduction of the front page in the 1970s, the drawingswere frequently the first page displayed for patents in the USPTO database. Somedatabases refer to the drawings as the Mosaics.

SpecificationsThe specifications section is sometimes called the Description, as that is itspurpose, to describe the invention. What is contained in the specifications variesaccording to the type of invention and may be from one page in length to 50pages or more for some of the electrical and computer-related patents; theaverage length is 2-10 pages.

ClaimsThe claims are the most important part of the patent, as these are the legalstatements describing the scope of the invention and, therefore, define what theinventor is entitled to exclude others from making. On the scanned image of apatent, the claims are usually the last section and are stated in a numericallyoutlined format starting with a statement similar to "I claim," "The following isclaimed" or "What is claimed is."

Now that you know the contents of a patent, examine the examples listed in theIntroduction section above one more time and see if you can distinguish the parts.

Further Reading About Patents

The introduction above provides enough information to recognize a patent citation or apatent document but much more information is available about patents and thepatenting process. The following resources are recommended for those librarians (andtheir customers) who would like to know more:


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General Information Concerning Patents (USPTO)http://www.uspto.gov/web/offices/pac/doc/general/index.html

Guide to Filing a Non-Provisional (Utility) Patent Application (USPTO)http://www.uspto.gov/web/offices/pac/utility/utility.htm

Guide to Filing a Design Patent (USPTO)http://www.uspto.gov/web/offices/pac/design/index.html

General Information about Plant Patents (USPTO)http://www.uspto.gov/web/offices/pac/plant/index.html

Nolo Presshttp://www.nolo.com/Nolo Press is recommended for its books and web site that describe the patentingprocess and other legal issues in terminology that most consumers canunderstand. Podcasts are also provided at {Podcasts about Patents, Copyrightand Art}

OECD Patent Statistics Manualhttp://www.oecdbookshop.org/oecd/display.asp?CID=&LANG=EN&SF1=DI&ST1=5KZ9J94R3G23Free PDF copy of the manual; chapters 2 and 3 provide a good introduction topatents on an international basis.

PCT Documentation and Information (USPTO)http://www.uspto.gov/web/offices/pac/dapps/pct/index.html

Provisional Application for a Patent (USPTO)http://www.uspto.gov/web/offices/pac/provapp.htm

Searching for Patents

The Free Web Databases and Their Content

The three main free web databases are the USPTO's Patents Issued and PatentApplications databases, Google Patents, and the European Patent Office's Worldwidedatabase on their Esp@cenet system. Other free databases exist, each with uniquefeatures, but generally these have coverage limited to patents that are more recent.

USPTO

There are two databases at this site. The Issued Patents database contains imagesfor all available U.S. patents from 1790 to the present. For 1976 to the present,HTML full text is available and searchable. Prior to 1976, only the patentnumber, patent issue date, and current U.S. classification are searchable. TheIssued Patent database is updated every Tuesday. The Patent Applicationsdatabase became available on March 15, 2001 but contains patent applicationsfrom November 29, 2000 to the present. As inventors have the option to delaypublication of their applications for 18 months, there will be some recentapplications missing from the database. The Patent Applications database isupdated every Thursday.


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Unfortunately, the images in the USPTO databases are in TIFF and require aspecial plug-in for web browsers; more details are provided atPatent Full-PageImages. Depending on the TIFF viewer, in some cases, patents may only bedisplayed and printed one page at a time.

Esp@cenetThe European Patent Office maintains a worldwide database of patents from over80 countries and regional patenting agencies. Coverage varies among the

countries in terms of dates and availability of full text versus citation/abstract;detailed coveragetables are available. For help with deciphering these tables seeexplanations ofcountry codesandkind codes. In some cases, amachinetranslation of the description and claims to/from English, German, French,Italian, and Spanish is offered. Update schedules vary from country to countryand this information is listed in the right-hand column on the Esp@cenet homepage.

Although patent images are displayed in PDF, patents over 50 pages must bedisplayed and printed one page at a time. For patents under 50 pages, the wholepatent may be downloaded in one file.

Google PatentsGoogle Patents has the images for most of the US patents and patent applicationshowever, some early X patents may be missing and the database is usuallyseveral months behind the USPTO databases. Although Google Patents has fulltext searching available for all patents (not just from 1976 to the present asoffered by the USPTO), the searching is unreliable due to the garbled text createdduring OCR transfer from images into text. For this reason, Google Patents is notrecommended for serious prior art/patentability searches, however, it's a fun wayfor students to explore the interesting world of patents.

The best use of Google Patents at this time for librarians is to obtain patent PDFimages in which the whole patent may be printed/downloaded in one click.

Search ing for Patents by

Number

Have the patent number? Then it's easy to get the patent.

Google

Patents

In the search box put PATENT: followed by the

number with no punctuation. Example:PATENT:5623411 If a patent is not found via thismethod, trying entering just the number.

USPTO Using the Patent Number Search in either theIssued Patents or Patent Applications databaseenter the number as the examples under the searchbox show.

Esp@cenet Click on Number Search in the left-hand columnand enter the two-letter country code and thenumber as shown in the example to the right of the


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search box.

Inventor

Patent databases do not have authority control for inventor names; names are recordedexactly as stated on the application; be sure to search for all variant forms of theinventor's name. As is typical with author searches, try various ways of entering

difficult last names and search different spellings.

USPTO(1976 to thepresent)

Using the Quick Search in either the IssuedPatents or Patent Applications database, set thefield to Inventors Name; enter the name ininverted format with a dash in between and usetruncation, Smith-J $orSmith-J ohn$

Esp@cenet Using the Advanced Search in the Worldwidedatabase, enter the inventor's last name in theInventor search box. The inventor's first name

may also be included, e.g., Smith J ohn, however,this search may retrieve patents in which the twonames belong to co-inventors rather than oneindividual. The most specific type of search usesquotation marks around the inventor's name, e.g.,"Smith J ohn"; this search retrieves onlyinventors thatexactlymatch the entry withoutvariation in content or order. To searchco-inventors, enter SmithAND Harper

To limit the search to patents from a specific

country, in the "Publication Number" search box,enter the two letter country code (e.g., US) withno spaces or punctuation. To limit the search topatents within a specific time frame, in thePublication Date search box enter the date(s) herein the format: YYYYMMDD.

Assignee

Patent databases do not have authority control for assignee names; names are recorded

exactly as stated on the application. As is typical with corporate author searches, try allvariant forms of the company name. Be aware that patents granted to a university maybe assigned to a governing board rather than to the university. For example, many, butnot all, patents that come from faculty and researchers at Arizona State University andthe University of Arizona are assigned to the Arizona Board of Regents.

USPTO(1976 to thepresent)

Using the Quick Search in either the IssuedPatents or Patent Applications database, set thefield to Assignee Name; enter the name with adash in between words (use truncation "$" if


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desired) Minnesota-Mining$The dash does notneed to be used but is helpful in obtainingprecision.

Esp@cenet Using the Advanced Search in the Worldwidedatabase, enter the assignee's name in theApplicant's search box.

Subject

Searching for patents by subject may be the most challenging part of patent reference;however, it is essentially the same as using controlled vocabulary in indexing andabstracting services.

Patent subject searching consists of the following steps:

Identify possible patent classifications for the invention by doing a keywordsearch and examining the results for their classification placement.

A.

Reading the definitions of the classifications found in step A to determine which

are appropriate for the invention.

B.

Search by the appropriate classifications.C.

Note: If searching for chemical compounds, do not try using either the US orInternational Patent Classifications, see "Chemical Patents"

U.S. Patents Using the Quick Search, enter a word or phrase describing thesubject of the invention (e.g., teeth protector). Click on thepatent titles that seem appropriate and look for the CurrentU.S. Classification assignments (e.g., 128/861, usually in thefourth section from the top) in the text version of thesepatents. Go to theUS Patent Classification home pageand onthe left side of the screen, enter a class/subclass number fromyour list of possible classifications into the search box.Examine the hierarchy and definition for this subclass, but alsobrowse the schedule for the subclasses nearby -- one or moreof them may also be applicable for the invention.

To see the hierarchy for this specific subclass, click on thesubclass title; a new window will open and the hierarchy willbe displayed.

Example: 128/861

128 SURGERY846 BODY PROTECTING OR RESTRAINING

DEVICES857 . Head or Face Protector (e.g., lips, ears, etc.)859 .. Oral Cavity Protectors861 ... Teeth Protectors (e.g., mouthpieces)

Close the hierarchy window to return to the classification


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schedule and click on the subclass number (ex. 861) to see thedefinition.

The definition describes the types of inventions covered bythis class/subclass. Some definitions may also have "crossreferences," these are labeled "See or Search This Class,Subclass" for inventions that are in this same class but adifferent subclass and "See or Search Class" for inventions that

are in a totally different classification.

If this class/subclass is appropriate for the invention or subject,use the browser's back button to return to the ClassificationSchedule. To the left of the subclass, click on the blue squarewith the "A" to see the patent applications published sinceMarch 15, 2001 in that category and/or click on the red squarewith the "P" to see the patents issued on that category.

International Patents Patents in theEsp@cenet's Worldwide DatabasecontainInternational Patent Classification (IPC) numbers and may be

used to find patents from different countries and written indifferent languages but are about the same subject. The IPCuses a hierarchical outline of all possible subject categories forinventions; it is similar in concept to the US Classificationsystem but has a different format.

Subject searching for international patents consists of the sameprocess as the U.S. patents:

Identifying possible patent classifications for theinvention.

A.

Reading the definitions of those classifications todetermine which are appropriate for the invention.

B.

Search by those classifications.C.

Select "Quick Search" from the column on the left, enter aword or phrase in the third search box. Be sure to keep thedatabase set to "Worldwide" and the type of search to "Wordsin title and abstract." Make note of the IPC/Internationalclassifications for patents of interest.

Searches by keyword are limited to patent title and abstracts;full-text searching is not available even if the patent is

available in the database in full text. A worldwide search (i.e.,not limited to a specific country) will only process the first twowords entered in the search box; however, a search limited toa specific country will process up to five words in the "Title orAbstract" search box.

Go to theIPC and click on the "Browse and Search the IPC"link; in the left column, in the "Current Symbol" box, enter theIPC classification (e.g., A61C 5/14). For words within the IPChierarchical outline that are highlighted in blue, click on the


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word to see its definition.

When you have found the appropriate International PatentClassification(s), click on the little "magnifying glass" icon thatis located to the left of the classification code. The "IPCBridge" window will appear in the middle of your screen; inthe "Patent Databases" section of the IPC Bridge window,click on the "Esp@cenet (AL)" link that will automatically do

a search for that classification in Esp@cenet.

More on Patent Searching

Chemical Patents

For those who are "chemistry-challenged" or "chemistry-phobic," for your own peaceof mind, please skip this section! This is the only section of the guide that will mentionfee-based resources.

Chemical patents present unique searching challenges and require knowledge ofcollege-level chemistry for both inorganic and organic. The challenges result from howthe patent classification systems categorize chemicals and the use of Markushstructures in patents.

The chemical sections of patent classification systems revolve around the elementalcomponents, position within the periodic table, structure, and material category (e.g.,ceramics, paints, vegetable oil). Classifications are complicated and don't provideaccess to patents in a way most chemical and pharmaceutical researchers need, sosearching by classification for chemicals is not being covered in this article.

Markush structures provide a short hand way to describe multiple, structurally-relatedcompounds with a single structure diagram, followed by statements describing whatelements or molecules could be substituted at different points in the structure. Althoughvery convenient for the inventor, Markush structures present enormous problems fordatabase indexers and for patent examiners and searchers trying to decide if a patentcovers the compound or synthesis under investigation. A single Markush structure mayrepresent hundreds of different compounds, some of which may not even be discovereduntil many years after the patent issues. For example, examine the claims section of thispatent, US 5741892; how many compounds do you think are covered by these claims?Next, check out how Chemical Abstracts Service (see 1998:102892 or CAN

128:167719) handled the indexing of this patent; CAS does not try to identify all thehypothetical variants.

Consequently, patentability searching for a newly synthesized compound is complicatedand should be left to the professionals who have the required specialized knowledgealong with specialized databases. On the other hand, patents for existing compounds,especially pharmaceuticals, maybe easier to find.

The FDA'sElectronic Orange Book links pharmaceuticals still under patent back to theactual patent. Patents for well-known substances may be listed as preparation/synthesisreferences in such basic chemical reference works as "Merck Index," "Combined


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Chemical Dictionary," and the "Kirk-Othmer Encyclopedia of Chemical Technology."Use Chemical Abstracts/SciFinder to find chemical patents by structure/substructureand by name, CAS registry number, or molecular formula (limit the document type topatents for large search results).

Patent Classification Schemes

The USPTO has a hierarchical outline of all possible subject categories for inventionscalled theU.S. Manual of Patent Classification; all issued patents and patentapplications are assigned to one or more of these categories. The classification systemuses a two-segment number, such as 128/861, in which the first number indicates themain category or "class" and the second number is the subcategory or "subclass."128/861 is the category for "teeth protectors, such as mouthpieces." The hierarchy of128/861 is outlined as follows:

128 SURGERY846 BODY PROTECTING OR RESTRAINING DEVICES857 . Head or Face Protector (e.g., lips, ears, etc.)859 .. Oral Cavity Protectors861 ... Teeth Protectors (e.g., mouthpieces)

128 is the main class.

CAPITAL LETTERS signify a division of the main class (in this case, subclass846 which is for Body Protecting or Restraining Devices).

A single dotsignifies a subdivision of the division (in this case, subclass857, which is a subdivision of subclass 846, which in turn is a division ofclass 128)

Two dotssignify a subdivision of a subdivision (in this case, subclass859, which is a subdivision of subclass 857, which is a subdivision ofsubclass 846, which is a division of class 128)

And so on...

Patents are placed in the most specific subclass related to the invention. The US PatentClassification system was designed long before computerized databases so there are noleading zeros and other devices in use to keep things organized. Additionally wholesections have been moved with their old numbering systems intact into other areas sothat the subclasses within a class do not necessarily fall in numerical order.

Consequently, although the system is hierarchical in nature, you cannot search abroader class and get all the patents assigned to the subclasses indented under that. Forthe teeth protector example above, searching for 128/846 will only find those patentsplaced in the 846 class (i.e., those patents that do not fit in the more specific classesunderneath) and will not find the patents placed in the classes indented underneath it(ex., 128/857, 128/859, 128/861). Truncation may be used inUSPTO databases(ex.,128/8$) but be sure you fully understand how the subclasses are arranged in a particularclass and how that will affect the results.

The International Patent Classification (IPC) system is more modern although less


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and this individual or company becomes the assignee. If an individual works for anorganization and discovers an invention on company time, the individual will be listedon the patent application (and eventually the granted patent) as the inventor and theorganization for which he works will be listed as the assignee. If an assignee for theinvention exists at the time of issuance, this will be recorded on the patent. Once thepatent issues, if the inventor or assignee notifies the USPTO, changes in assignmentmay be found in theAssignments Database.

Citation Data

Of course, you can use subscription sources such as "Web of Science" to find citationdata, however, free resources are available.

Esp@cenet To see if a patent has been cited by other patents:

In the left column, click on patent numbersearchKeep the database selection set to

"Worldwide"Put the patent number in the patent numberbox (if necessary, include the two lettercountry codeimmediately before thenumber if too many results are retrievedfrom a plain number search)On the results list, click on the title of thepatent to display the bibliographic datascreenOn the bibliographic data screen, click onthe red "View list of citing documents"

which should be near the middle of thescreen.

GooglePatents

Enter in the number (you may want to search thenumber both with and without the two lettercountry code). If you entered a number for a U.S.patent, the first item in the list is usually the patentitself. The others in the list are U.S. patents thatcite your patent. To get the count you have to goto the last page of the results and see what thenumber is.

GoogleScholar

To see if a patent has been cited within the text orreferences of an online journal article, enter in thenumber (you may want to search the number bothwith and without the two letter country code).

U.S. IssuedPatentsDatabase

The USPTO's Issued Patents database has citationdata that is searchable from 1976 to the present.

To determine how many times a U.S. patenthas been cited by another U.S. Patent:

1.


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Using the Quick Search:Enter the number of the patent(example: 6404950) in the first searchbox and change the field from "AllFields" to "Referenced By"

To determine how many times a foreignpatent has been cited by a U.S. Patent:Using the Quick Search:

Enter the foreign patent number inthe first search box and change thefield from "All Fields" to "ForeignReferences"Be Aware: The way foreign patentsare cited is not consistent -- you'llneed to search several variationsincluding with and without thecountry codebefore the number andwith variant spacing and punctuation--- be creative!

2.

To determine how many times a non-patentpublication has been cited by a U.S. Patent:Using the Quick Search:

Enter in the first author's last name inthe first search box and change thefield from "All fields" to "OtherReferences"If the author's last name is toocommon, return to the Quick Searchinterface and use the second search

box to include a word/abbreviationfrom the journal title (or title of thebook or conference); change from"All fields" to "Other References"(Example: chemical or chem)

3.

English Translations

Patents are written in the language of the country in which they are issued, soinevitably when dealing with international patents you'll be asked if an English

translation exists. The answer is "Maybe." The only way to get a precise, word for wordtranslation, is to hire a firm specializing in patent translations, an expensive and notalways viable option; but for the individual, especially a student, who only needs to geta general idea of what the patent covers,Esp@cenet may be helpful.

When looking at the bibliographic page for a patent inEsp@cenet, there will frequentlybe a column on the right of the gray box labeled "Also Published As." These are the"equivalent patents" that have been filed, or issued, in other countries for this invention.Obviously, you should look for an equivalent patent from the U.S. (or another Englishspeaking country). Note that these are not necessarily word-for-word translations and


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differences in the claims may exist due to patent law unique to a specific country.

Another option isEsp@cenet'sfree machine translation service. The services translatesthe full text of French, German, Italian, and Spanish patents into English; but beware,you get what you pay for here. The translations are at best rough, and at times,downright hilarious or indecipherable. To find the translation service, click on theDescription tab for the patent; a yellow "Translate this text" link is in the upper right ofthe gray box, if available.

Maintenance Payments & Expiration Dates

Although U.S. utility patents last for 20 years from date of application, some of thesepatents expire early while some have their terms extended beyond the original 20 years.

Early Expiration

To keep a U.S. utility patent in force for its full term, the inventor (or assignee) mustpay maintenance fees at 3.5, 7.5, and 11.5 years. Failure to pay results is anabandonment of the patent; the patent expires early and the invention goes into the

public domain; once in the public domain, others have the right to manufacture theinvention.

To determine the status of a patent's maintenance fees or to determine if a patent hasexpired for lack of maintenance fee payment:

Go to the USPTO's publicPAIR (Patent Application Information Retrieval)databaseSelect Patent Number and enter the number in the search boxOn the patent record, click on the "Fees" tabA new window will open; to the right of the "View Statement" button, select

which year (4, 8, or 12) you'd link to view and then click on the "ViewStatement" button; details for that maintenance fee/payment will be displayed.The "Transaction History" tab may also be used. If a patent has expired due tolack of maintenance fee payment, there should be a line at the top of thetransaction list that says "Expire patent" or a similar statement referring toabandonment or expiration. Patents that reach their normal expiration date willnot have an expiration note in their transaction history. To see the actualdocumentation for a transaction, click on the "Image File Wrapper" tab.

Term Extensions

Some utility patents involve material needing Food and Drug Administration (FDA)approval before marketing. FDA approval for food additives, pharmaceuticals intendedfor humans and even some medical devices may take years and could adversely affectthe length of market exclusivity. In these cases, inventors/assignees may request a termextension. In addition toPAIR (under the Patent Term Adjustments tab), otherresources to use to check for term extensions are:

USPTO Patent Terms Extended, andFDA'sElectronic Orange Book (EOB)

The preferred search in the EOB is by the proprietary name (i.e., trade name) of


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the product. The results of proprietary search will be a list of the differentproducts that contain that ingredient; select the most appropriate one and click onthe application number to the left. Next, click on the "View" link for the "Patentand Exclusivity Info "and you'll see the expiration information or you'll see ascreen that says there are "no unexpired patents" for this product.

Statistics

Patent statistics help measure the industrial and economic activity of a country or state.

TheUSPTO statisticsare organized by inventor's state of residence, assignee name andbroad technology categories. If you use the USPTO databases to gather statistics, forexample how many patents were issued in Arizona in 2003, the number retrieved willbe larger than that listed in the USPTO statistics. The USPTO only considers the placeof residence of the first inventor for gathering statistics, while a database search cannotdistinguish between first and second co-inventors. Consequently, a patent co-inventedby two individuals, the first living in California and the second in Arizona, would becounted as belonging only to California in the USPTO statistics, but in the USPTOdatabases, that patent would be retrieved by either a California or Arizona search.Another caution is that many of the USPTO patent statistical tables are counting onlyutility patents and not design or plant patents.

For international patent statistics, check out:

World Patent Report (WIPO)(List of) National and Regional Office IP Statistics and Annual Reports(WIPO)

And Finally...The Legal Advice Issue

As with all legal topics, you must avoid giving legal advice during the patent referencetransaction but still be helpful in connecting the individual with the needed information."Instruct, demonstrate, but never interpret" is the guiding principle.

Start prior art/patentability searching transactions, explaining what you can and cannotdo for the individual; put a positive spin on it. Example: "Although I can't give you legaladvice, I amable to show you how to use the patent databases."

Be prepared to give information for where individualsmay get help, such as:

How to find someone whocangive them legal advice:Database of attorneys and agents licensed to practice before the USPTO, or

Your employer's legal officeIn academia, the research and/or technology transfer office.

Contact information for local patent support such as inventor associations,upcoming workshops, or whatever else is available in your area.Independent inventor information on theUSPTO's web site.Patent self-help books in your collection.

Have a previously prepared demonstration available on how to search the patentdatabases using keywords and classification; select a simple invention for thisdemonstration -- something that every person would understand. Stick to strictly


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showing the steps without interpretation. Do not use the individual's invention as thedemonstration example no matter how much he may cajole or insist; if you use hisinvention, you'll almost always find yourself stepping over the interpretation line bysuggesting terminology and classifications for searching, in essence giving legal adviceon the "field of search."

Yes, this is antithetical to what reference librarians do and certainly doesn't sound likegood customer service but the results of the prior art search will be what the individual

uses to decide whether to apply for a patent himself, employ a patent attorney, ordecide not to patent. Time, money and business plans ride on this decision. If theindividual feels he is not capable of doing his own prior art search, direct him tosomeone who can -- the patent attorney or agent.

The ultimate caution isnever do a prior art search for an inventor whether on or offthe job and if asked, you can't recommend a student who can be hired on the cheap todo this either. Direct the inventor to thePatent Attorneys and Agents database.

Of course, if you are helping a student with an assignment, and the student does notintend to go forward with a patent application, you may loosen up on all of these legal

cautions. Consider the transaction as an instruction opportunity and help the studentwith suggested keywords and classifications; but at appropriate points in the transactionremind him that in "real life," he would be getting a patent attorney to assist him. If thestudent isplanning to file a patent application, advise him to talk with his instructor sothe appropriate unit in your college/university starts assisting the student as soon aspossible to avoid legal pitfalls. For example, some graduate students may need to delaypublication of their theses/dissertations in order to meet patenting requirements.

You may also wish to consult the web sites of thePatent and Trademark DepositoryLibrariesto see how they handle the legal aspects of patent searching and what wordingthey use.

Free On-the-Web Resources Mentioned in this Guide:

Electronic Orange Bookhttp://www.fda.gov/cder/ob/

This database from the U.S. Food and Drug Administration (FDA) containspatent information for drugs; the propriety name (i.e., trade name) search ispreferred. May be helpful in finding patents describing the synthesis of moderndrugs or for determining if patents are still in effect and/or have been extended.

Esp@cenet

http://ep.espacenet.comA worldwide patent database developed and maintained by the European PatentOffice and containing patent information for over 80 countries and patentingagencies. This is not a complete database of all the world's patents as dates ofcoverage varies among countries and some countries' patents are available in fulltext, while others only have bibliographic information plus an abstract.

Google Patentshttp://www.google.com/patents

Useful for finding a copy of a U.S. patent in PDF with all the pages in one file.


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Word searching is too unreliable to be used for serious patentability searching,but may be fun for younger students.

USPTO: Assignment Databasehttp://assignments.uspto.gov/assignments/q?db=pat

Use to determine if an inventor has transferred his patent rights to anotherindividual or company (assignees).

USPTO: Issued Patents and Patent Application Databaseshttp://patft.uspto.gov

There are two databases at this site. The Issued Patents database contains imagesfor all available U.S. patents from 1790 to the present. For 1976 to the present,HTML full text is available and searchable. Prior to 1976, only the patentnumber, patent issue date and current U.S. classification are searchable. TheIssued Patent database is updated every Tuesday. The Patent Applicationsdatabase became available on March 15, 2001 but contains patent applicationsfrom November 29, 2000 to the present. As inventors have the option to delaypublication of their applications for 18 months, there will be some recentapplications missing from the database. The Patent Applications database is

updated every Thursday.

Unfortunately, the images in the USPTO databases are in TIFF and require aspecial plug-in for web browsers; more details are provided atPatent Full-PageImages. Depending on the TIFF viewer, in some cases, patents may only bedisplayed and printed one page at a time.

USPTO: K ind Codeshttp://www.uspto.gov/web/patents/authority/kindcode.htm

Kind codes are one or two character designations following the patent number

and indicate what type of patent it is and/or at what point it is in the patentingprocess. This list is only for U.S. kind codes.

USPTO: L ist of Patent and Trademark L ibrarieshttp://www.uspto.gov/go/ptdl/ptdlib_1.html

Approximately 80 libraries are in the U.S. in the PTDL program; some of theselibraries provide patent information and searching instructions on their web sites.You may also contact these libraries for help with your customers' specific patentquestions. Some PTDLs provide outreach programs; ask if they will do aworkshop in your area for librarians and/or independent inventors.

USPTO: Patent Application Information Retrieval (PAIR) databasehttp://portal.uspto.gov/external/portal/pair

For recent patents and applications, this database tells what actions have beentaken and provides copies of the documentation. Useful for determining if apatent has expired early from non-payment of maintenance fees.

USPTO: Patent Attorney/Agent Searchhttps://oedci.uspto.gov/OEDCI/

The database of attorneys and agents licensed to practice before the USPTO;these are people who have passed the Patent Bar Exam.


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A patent attorney has a law degree and has passed both a traditional bar exam fortheir jurisdiction as well as the Patent Bar Exam. This type of attorney mayrepresent an individual in U.S. Court for patent litigation in addition to assistingwith filing for a patent and communicating with patent examiners during patentprosecution. A patent agent usually has one or more advanced science ortechnology degrees in addition to passing the Patent Bar Exam; an agent mayassist an individual with filing for a patent and communicating with patentexaminers during patent prosecution but may not represent the individual in U.S.

Court. Do not direct customers to regular civil or criminal lawyers for intellectualproperty matters.

Not every attorney or agent listed in this database is available for the public tohire. Those listing a corporation (e.g., Motorola) as their "firm" are employees ofthat business; instead direct the individual to look for attorneys and agents whoeither work for a law firm or are in business for themselves.

USPTO: US Patent Classificationhttp://www.uspto.gov/go/classification/

Portal to the US Patent Classification system. Includes a concordance betweenthe US system and the International Patent Classification (IPC).

USPTO: Patent Terms Extendedhttp://www.uspto.gov/web/offices/pac/dapp/opla/term/index.html

A listing of drugs, food additives and medical devices whose patent terms wereextended because FDA approval delayed marketing of the product.

WIPO: International K ind Codeshttp://www.wipo.int/standards/en/pdf/07-03-02.pdf

Kind codes are one or two character designations following the patent number

and indicate what type of patent it is and/or at what point it is in the patentingprocess. This list is covers kind codes for over 50 countries.

WIPO: International Patent Classificationhttp://www.wipo.int/classifications/ipc/en/

Portal to the International Patent Classification (IPC).

WIPO: World Patent Reporthttp://www.wipo.int/ipstats/en/statistics/patents/

A review of current international patenting activities with statistical data.

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