by David Hitchcock, 1999, 200 pages, $29.95 (paperback), ISBN 0-87337-476-2. Published by Nolo Press
Too often inventors and business owners plunge ahead with an exciting new idea. They invest large sums of money in research and tooling only to find the idea is already patented or that it cannot be patented because it is actually not a new idea. The solution for avoiding this waste of time and money is a preliminary patent search. By using this book, you can rapidly learn how to tap into the remarkable facilities that available today and find a quick and low cost answer to the question of whether to go ahead or abandon an idea.
The amazing beauty of some of these information sources is that you can reach them from your home, your desk at work, or at a nearby library. Even if you feel you are computer illiterate, "a dinosaur", you'll find the author's step-by-step instructions will enable you to find a gold mine of information pertaining to your invention.
The author starts out with an overview that clarifies the differences between various intellectual properties such as patents, trademarks, and trade secrets. He notes it is important to overcome the common misconception that patent owners can count on law enforcement agencies to defend their patents. The government will not. A patent is not a defensive legal right, but rather an offensive legal right. It is you that must sue infringers.
He then discusses some of the patent searching basic principles and tools. He simply and clearly presents how electronic databases now allow you to extract and examine patent data dating back to 1971. He covers the basics, such as keywords, wildcards, and Boolean logic in easy to understand steps accompanied by pictures that show you exactly how the information will appear on your computer screen.
While computer searching on the Internet has become a terrific starting point, the author stresses the continuing importance of using the facilities of the Patent and Trademark Depository Libraries (PTDL) that are available throughout the nation (addresses and phone numbers are given in the appendix). Librarians will assist you in using the CASSIS (Classification and Search Support Information System), which is a CD-ROM program, and assist you in using the APS (Automated Patent System), a text search program. A unique feature of some of the PTDLs is that you can run off (from microfilms) full copies of U.S. patents dating back to #1 in 1835!
The writer details how using and understanding the patent office patent classification system will greatly aid your search efforts. This involves using the Index to the U.S. Patent Classification System, the Manual of Classification, and the Classification Definitions. He gives examples and reproductions taken directly from these books.
After you become at home with the fundamental methods, you are introduced to advanced methods that you can use on the PTO and IBM Websites. He explains, in plain English, how to use the XOR Boolean operator, proximity operators and how to use wildcards. You will be pleasantly surprised as to how soon these arcane sounding terms become old friends. Again, in each case, examples and their screen images will aid you to grasp what is going on.
Further on you are introduced to exploring the STO (Source Translation and Optimization) Internet patent search system. Most of the methods covered in the book are cost free, but there are also fee-based methods. Their use and possible advantages are described. Many foreign patent systems are fee systems and the author lists the Internet addresses for the patent systems of some 17 countries and the World Intellectual Property Organization.
Some inventors make the mistake of failing to check non-patent office sources for prior art. Two frequently used Internet search engines, Alta Vista and Yahoo, are described and the addresses for seven more are given. Another basic source for information is the Thomas Register which is now also on the WWW. Web addresses for 12 government agencies are also given. Yet another tool to consider are the many discussion group Websites.
At the conclusion, the author gives suggestions for analyzing your search results. He notes it is common to come up with a half a dozen prior art patents and cites the four Patent Office criteria regarding Statutory Class, Utility, Novelty, and Unobvious. He notes the mental trap inventors often fall into by thinking "that if an aspect of your invention hasn't been "claimed" in a prior patent, you can claim it". He reminds us that pending applications, that may cover your very idea, are by law kept confidential. However, also note that if you can prove a prior conception date you may still obtain a patent.
This is a terrific, up to date, book for learning how to do a preliminary patent search at a very low cost. To this reviewer, it looks like Nolo Press has another winner in its stable of books for inventors.