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Computer searching is getting easier and easier, to the point where it should be routinely incorporated into some of the more traditional tasks that patent attorneys and IP managers perform. Available databases allow us to quickly find a cornucopia of information not previously available. The reality, however, is that the great majority of patent professionals do not routinely use these tools. A multitude of patent databases is available for public searching. For example, the PTO’s web site, www.uspto.gov, allows simple Boolean searching of U.S. patents and provides free patent printing capabilities (although printing drawings is slow and requires download of a plug-in from a separate web site). The IBM patent web site, www.patents.ibm.com, also allows simple Boolean searching of U.S., PCT, European and Japanese patents. In addition, this site links the U.S. patents to their foreign counterparts, thus allowing the user to view the entire patent family at no cost. The IBM patent web site and other commercial patent web sites, such as reedfax.comand micropat.comoffer patent delivery service in various formats for a nominal fee. Pay databases, such as Dialog, Lexis-Nexis, Questel-Orbit and others, allow more complex Boolean searching of U.S. and foreign patents. Derwent’s Inpadoc database, available through Dialog, also provides advanced searching of patent families and patent status. (A list of available patent search engines is listed in the “ip links” section of the www.ipmag.comWeb site.) The advantages of using these databases are described below. PRODUCT CLEARANCE Computer searching makes “new product” clearances more effective. Typically, product clearances are not done until after the product is finally designed and is ready to be marketed, even though it is better to start product clearance early on in the product development stage. Any necessary changes in design are better made sooner than later. Clients typically do not ask for much checking of whether there are patents out there that the clients might later be accused of infringing. They typically wait until they receive a “warning letter,” and then they respond. The new databases, however, facilitate easy periodic checking for competitors’ patents that have recently issued. Specifically, it is extremely easy to plug in assignee names or keywords that describe certain technology to determine whether competitors or unheard-of companies have recently received any patents. This can be done once a month, for example. In fact, some database services will do this searching automatically on a weekly or monthly basis. These services send the results to you via e-mail, which you can review at your convenience. For example, for a fee, the Dialog Patent Watch provides this service for U.S. and foreign patent databases. One common excuse for not searching for competitors’ patents is that if one is found, then actual knowledge of the competitor’s patent is created. This actual knowledge triggers the necessity to get an opinion of noninfringement, invalidity or unenforceability in order to defend against a possible willful infringement claim in any later litigation. “Besides, opinions cost legal fees that we [the client] do not want to incur.” We submit, however, that it is always better to know what potential intellectual property roadblocks might exist. Simply “sticking your head in the sand” is not the preferred solution. UNCOVERING OPPORTUNITIES These databases can be used to uncover new business opportunities. It is sometimes possible to determine whole areas within a field that are relatively patent free by using a technique known as “patent mapping.” In essence, a map or chart is made that graphically displays all of the patents in an area. A basic way to patent map is to first search by PTO class and/or subclass. Once the players and patents within a particular class/subclass are identified, the patents are collected and then analyzed. Trends and gaps in coverage are noted. Various organizations provide more detailed patent mapping services. Aurigin Systems ( www.aurigin.com), for example, sells software that creates a three-dimensional island map or a three-dimensional bar graph of patents sorted by assignee, by subject matter or by other relevant categories. Derwent’s ( www.derwent.com) ITP service provides patent profiles by technology category, such as semiconductors, aerospace and many others. This allows a company to specifically target its patent search to a specific technology. Other Web sites, such as the IBM patent site, allow the user to determine which patents are available for license. COMPETITIVE INTELLIGENCE Until the early part of the 20th century, the PTO required that working models be submitted with applications. In the 1800s, members of Congress would go to the PTO to see what was being invented. It helped them develop policies that fueled the Industrial Revolution. In the same way, businesses can now search for trends in the inventions of competitors. Patent analysis can determine what your competitors are doing, what they are working on and what types of products they may introduce. Searching foreign databases for competitors’ published applications (foreign countries require mandatory publication of applications) tends to be fruitful in this regard because it indicates what competitors are up to well before their patents issue in this country. (Mandatory publication of applications in the U.S. begins November 2000.) The European Patent Office Web site, http://www.epo.co.at/index.htm, provides a good source of published worldwide patent applications that may be printed out in Adobe. In the pharmaceutical industry, searching the Food and Drug Administration database also tends to be fruitful. In addition, computer searching allows both the engineering staff and the patent attorneys to get up to speed on the latest technical developments and product applications. Engineers and scientists at some companies do not review the patent literature. But by doing so, they will learn about practical new ideas and new applications that are rarely described in scientific journals, which emphasize theoretical and basic research developments. In its Bonito Boatsdecision of 1988, the Supreme Court was right on point in this regard when it stated that one of the primary values of patents are as “building blocks” for future innovation. In other words, patents are also scientific publications at the cutting edge of knowledge. PATENT ENFORCEMENT Computer searching also can be used to investigate possible infringement of a client’s patents. One year ago, a client who was charged with infringement was concerned about the amount of detailed technical information the patent owner had obtained about the client and its products. Our first task was to determine where the “leak” came from, because obviously a spy must have been at work. However, we showed the client how all the detailed information was probably obtained from Internet sources such as those described herein. (Note that a competitor’s activity may also be monitored by searching non-patent databases. There are a large number of non-patent technical databases on the Internet, such as www.spi.comfor Internet related technology, chemical abstracts at http://info.cas.orgfor chemical technology, and many others.) In conclusion, clients must set up programs to routinely monitor their respective patent environments. The increasing availability and ease of use of patent databases precludes any excuses. Michael D. Kaminski of Washington, D.C.’s Foley & Lardnerspecializes in patent law and is an adjunct professor at the Washington School of Law and the George Mason University School of Law. Leon Radomsky is also with Foley & Lardner, where he specializes in patent law.

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