In-house intellectual property (IP) legal teams are increasingly faced with the task of meeting the IP research needs of their internal clients (e.g., business units, technology transfer groups, etc) while staying on budget and controlling expenses.
In identifying potentially patentable inventions, one preliminary step is to conduct a prior art search. Some organizations hire outside patent research firms for searching services. Others use proprietary patent research tools that provide sophisticated patent mapping to handle this task. While these approaches can provide a strategic patent overview), the associated tools and resources are expensive. This adds more constraints to an already tight IP budget. Fortunately, there are several free platforms available via the Internet to alleviate the initial expense of up front IP research.
The first step in any initial IP evaluation should include the USPTO (U.S. Patent & Trademark Office) website. The USPTO offers a number of free and useful resources including the “USPTO Patent Full Text & Image Database” and the “USPTO Patent Application Full-Text & Image Database”. Both resources are freely available at the USPTO’s website. For new searches, the USPTO website even offers a step-by-step strategy for your preliminary research. A simple keyword patent search can be performed quickly using these two free patent resources. The USPTO’s electronic, searchable database, known as “PAIR,” (Patent Application Information & Retrieval) is another invaluable resource. PAIR allows an IP researcher to view and download the complete prosecution file histories of U.S. patent applications and issued patents.
These tools, used in combination, are powerful. For example, a user can identify relevant prior art with the “Full Text Database,” and make note of the patent application serial number or patent number of the reference. Then the searcher can use PAIR to retrieve the entire prosecution file wrapper of the identified reference, which provides details regarding how the patent was prosecuted, and ultimately issued.
Another free resource is Google Patents. Unlike the USPTO databases, which only provide information on cases filed in the U.S., Google Patents contains a treasure trove of international patent applications and issued patents including patents from Europe, China, Japan, and so on. While Google provides a user-friendly and comprehensive research tool, caution is required when using Google. Google is under no obligation to protect proprietary or confidential information entered by a user. As such, users should be mindful of the material they enter when using Google for searching, particularly when the subject matter is not yet publicly available.
Finally, the WIPO (World Intellectual Property Organization) offers a free “Patentscope” research tool. Patentscope allows a patent research to review the WIPO’s vast index of international filings. The WIPO search tool can be used to search, not only the PCT database of 2 million plus international applications, but worldwide patent collections as well.
These free tools provide access to a vast and rich collection of patent documents and information, and can be used by your IP group to save on upfront patent research costs.