I used the term "business validity" purely to differentiate from legal validity.

SCOPE OF TOPIC: This product evaluation will describe a patent validity search in detail and what type of information sources to consult, the scope of the search, the time frame of the search, the pros and cons of conducting the search in house, when to "farm" it out, and if completed in house, whom is/are the indicated searchers.

BACKGROUND: A patent is the right to exclude others from making, using, or selling the claimed invention for a limited time. Article 1, Section 8 in the Constitution of the United States empowers Congress to "promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Title 35 of the U.S. code governs U.S. patent law and its requirements for obtaining a patent. The invention must meet the following requirements in order to be patentable:

1. Novelty: It must be different from the prior art and have no prior publication, use or sale more than one year prior to its application.

2. Usefulness: It must function to carry out the object of the invention, be practical and be makeable or usable by one of ordinary skill in the art.

3. Non-obviousness: It must not have been obvious to one of ordinary skill in the art at the time of the application.

In order to determine if an invention meets the above requirements, and is indeed patentable, a patentability search is conducted. This is the simplest and most frequently encountered type of search, and should be carried out regardless of the certainty of patentability. It will help the application process, and often strengthen the invention against future attacks and questions of validity.

In order to determine whether a patent will withstand attack in litigation, a patent validity search is conducted. You could think of a validity search as an extensive or comprehensive patentability search. It is similar to a patentability search, but its purpose is to determine whether a patent already obtained on an invention is valid or not. If it is thought that a patent may be invalid or another party may try to claim invalidity resulting from prior public use or a prior inventorship, an investigation must be undertaken to find witnesses who can prove or disprove this. These witnesses could attest to the drawings, test reports, or the parts used in making the apparatus.

A validity search could be conducted when litigation concerning infringement of a patent is on the horizon, and the defendant is trying to invalidate the plaintiff's patent. Another example where it proves useful is in licensing negotiations. In assessing the value of the licensed patent a licensee is about to receive, he/she may want to conduct a validity search to determine the strength of the patent. Upon receiving the results, the licensee can then adjust its minimum royalty payments according to the findings before he/she enters into the license agreement.

Because a validity search is a search based on an obtained patent, various search constraints in place under a patentability search often will not hold true here. There are usually incentives to conduct as thorough and as comprehensive a search as possible. But ultimately, the individual reason for conducting the search will determine its completeness, or lack thereof. Therefore, in approaching this report, it will be assumed that I will describe a vast array of resources available to conduct a patent validity search, and the user can select what he/she deems appropriate to meet their individual needs.

I. SCOPE OF THE SEARCH

A. Prior art

B. Prior inventorship

C. Prior use

D. Other related claims - possibility

E. Locating witnesses

F. Calling expert witnesses

II. INFORMATION SOURCES TO CONSULT

•  
  i) Patent and file wrapper
   
  i) Patent and file wrapper
   
  i) Scientific and Technical journals
  ii) Catalogs
  iii) Brochures
  iv) Compendiums
   
  •  
    •  
    a. Inventor may have disclosed invention
    b. Previous inventions by inventor
  i) Inventor's Web Page
    ii) Computer-Based databases
A. United States Patents
  B. FOREIGN PATENTS
  C. LITERATURE
  D. INTERNET
 

III. Methods For Searching The Information Sources

•  
  •  
    a. at Crystal City in Arlington, Virginia
     
    a. One in every state
     
    a. In the Patent Office Examination Groups
     
    a. Department of Agriculture

    b. National Bureau of Standards

    c. National Library of Medicine

    d. National Aeronautics and Space Administration

    e. Federal Aviation Agency

    f. National Academy of Sciences

    g. Armed Forces Institute of Pathology

    h. Library of Congress

    i. American Chemical Society
     

  i) USPTO Office Search Room
    ii) Inventor's library

  iii) Patent Depository Libraries
   

  iv) Patent Examiner's personal collection
    v) United States Patent Office Scientific Library

  vi) United States Scientific Library of Technical Publications

  vii) Washington D.C. based libraries
   

  viii. United States - major public libraries
   
  i) Most U.S. based are located in Washington D.C.
   
  •  
    a. Tailored towards patent searching

    b. QPAT (http://www.qpat.com)
     

    a. Confidential in nature
     
    a. Not confidential in nature
     
    a. a plethora of databases
     
  i) Questel/Orbit
    ii) Micro-Patent (http://www.micropat.com)
    iii) IBM Patents (http://www.ibm.com/patents)
    iv) DIALOG (http://www.dialogselect.krinfo.com)
    v) USPTO (http://www@pioneer.uspto.gov)
A. Manually - (cumbersome and time consuming)
  B. Patent Detective Agencies
  C. Computer-based Databases - For Validity Searching
 

In carrying out a patent validity search, it would be best to use a combination of the above resources, and any other sources that might contain relevant information. The more thorough a search you conduct and the more sources you utilize, the more promising the results are apt to be, and the stronger your validity/invalidity case will become. If time and resource allocation permits it, search every avenue possible. In searching United States patents on computers, a plethora of access points are available for validity searches, as outlined above. They will be covered in brief below.

Questel/Orbit can be thought of as a specialty shop for patent searching. Its service covers over 60 countries including the U.S., and has standardized formats along with powerful system features for indexing. United States coverage is provided by Questel/Orbit's QPAT database, which provides the full text for all patents issued since 1974.

International coverage is given by Derwent's World Patent Index (WPAT covering 35 countries), INPADOC (INPD covering 50 countries with legal status information), and European Search Documentation (EDOC covering Japanese granted patents), all which can be accessed through Questel/Orbit.

MicroPatent is an invaluable source for patents and contains U.S. patents dating back to 1975, European patent applications dating back to 1978, WIPO applications dating back to 1978, as well as unexamined Japanese patent applications dating back to 1995. A lot of attorneys recommend this service, and it is only three dollars to have a patent printed or sent to you. It is also a confidential in nature as guaranteed by their service agreement.

The IBM Patents database gives you access to U.S. patents dating back to 1971, with patent images going back to 1980. It allows you to locate and view prior art by paging through the cited patents. In addition, copies of U.S. patents are available for two dollars and fifty-cents.

DIALOG has a plethora of databases covering U.S. and international patents. Derwent World Patents (files 350, 351) covers 35 patent issuing organizations worldwide. CLAIMS/U.S. Patents (files 340, 125) covers U.S. patents going back to 1950. U.S. Patents Fulltext contains the best mode,invention background, and enabling disclosure. INPADOC is a worldwide database and can be used to determine if a patent is still valid, if it is involved in problems, or what the legal status of it is.

The United States Patent Office Patent site provides a free abstract searching service. It contains a boolean search page, an advanced search page, and a patent number search page. Patents can be obtained for three dollars per copy.

When searching manually according to subject matter, the following resources can be utilized:

1. Subclasses of United States and foreign patents

2. Articles in early editions of general encyclopedias

i) Encyclopedia Britannica

ii) Encyclopedia Americana

3. Industry specific indexes:

•  

  The Library Association, 7 Ridgemont Street
  London, W.C.L.

  American Chemical Society
  20th & Northampton Street
  Easton, Pennsylvania

  Institute of Electrical & Electronics Engineers,
  345 East 47th Street,
  New York, N.Y. 10017
  Institute of Aeronautics and Astronautics
  Phillipsburg, New Jersey

  Superintendent of Documents
  Government Printing Office
  Washington, D.C. 20402

i) Applied Science and Technology Index

ii) British Technology Index

iii) Chemical Abstract

iv) Science Abstracts
 

v) International Aerospace Abstracts
 

vi) Nuclear Science Abstracts

4. Industry-specific periodicals:

i) Journal of the American Institute of Chemical Engineers

ii) Aircraft Engineering

iii) Bulletin of the American Association of Petroleum Geologists

iv) Journal of the American Chemical Society

v) American Gas Association Monthly

vi) American Journal of Physics

vii) American Machinist

viii) Proceedings of the American Society of Civil Engineers

ix) Journal of the American Society of Heating, Refrigeration & Air-Conditioning Engineers

x) Journal of the Audio Engineering Society

xi) Chemical and Engineering News

xii) Coal Age

xiii) Combustion

xiv) Electrical Communication

xv) Electrical World

xvi) Journal of the Electrochemical Society

xvii) Electronic Engineering

xviii) Electronics

xix) Foundry

xx) Proceedings of the Institute of Electrical and Electronic Engineers

xxi) Journal of the Illuminating Engineering Society

xxii) Industrial and Engineering Chemistry

xxiii) Iron Age

xxiv) Journal of the Iron & Steel Institute

xxv) Machinery

xxvi) Machine Design

xxvii) Nucleonics

xxviii) Oil & Gas Journal

xxix) Paper Industry

xxx) Plastics Technology

xxxi) Review of Scientific Instruments

xxxii) Rubber Chemistry & Technology

xxxiii) Journal of the Society of Automotive Engineers

xxxiv) Textile Research Journal

xxxv) Welding Engineer

xxxvi) Wireless World

xxxvii) Comptes Rendus, Paris, France

xxxviii) Academy of Sciences of the USSR

xxxix) Acier, Stahl, Steel. Brussels, Belgium

xl) Acustica, Stuttgart, West Germany

xli) Angewandte Chemie, Weinheim, West Germany

xlii) Annales des Telecommunications, Paris, France

xliii) Archiv fuer Elektrotechnik, Berlin, W. Germany

xliv) Genie Civil, Paris, France

xlv) Kaeltetechnik-Klimatisierung,Karlsruhe, W.Germany

xlvi) Elettrotecnica, Milan, Italy

xlvii) Meccanica, Milan, Italy

xlviii) Zeitschrift, Verein Deutscher Ingenierure, Dusseldorf, West Germany

This is a list of some of the journals, catalogs, and industry-related indexes which provide a good basis for searching the prior art. Upon gathering the prior art in a patent validity search, but before patent litigation starts, the attorney should obtain the necessary background information by discussing the technology with experts and referring to standard or specialized technical reference volumes. The patent attorney should also establish any prior inventorship or prior use, and explore the possibility of other related, and possibly infringing, claims. He/she should also locate any witnesses involved in the invention that might be able to attest to drawings, test reports, or parts used in the making of the invention as it relates to the invention's validity. It may also become necessary to call forth expert witnesses in the area of expertise in proving the validity/invalidity of the disputed invention.

In gaining the necessary background information prior to patent litigation, a patent attorney may want to consult technical reference books and other publications which set forth and describe the patent law in the area at question.

Some of these references are provided below:

American Jurisprudence, Second Edition: Patents.

Deller, A. W. Deller's Walker on Patents, SecondEdition. Baker Voorhis and Company, Inc. Mount Kisco, New York 1964.

The Encyclopedia of Patent Practice and Invention Management, edited by Robert Calvert. Reinhold Publishing Corporation, New York 1964.

Nordhaus, Raymond c. and Jurow, Edward F. Patent Antitrust Law. Jural Publishing Company, Chicago, Illinois 1961.

Ellis, Ridsdale. Patent Assignments, Third Edition. Baker, Voorhis and Company, Inc., Mount Kisco, New York 1955.

Deller, A. W. Ellis Patent Licenses Third Edition. Baker, Voorhis and Company, Inc., Mount Kisco, New York 1958.

Thomas, Edward. Law of Chemical Patents, Van Nostrand Company, New York 1953.

Kirtz, Frank G. Law of Electrical Inventions. Clark Boardman Company, Ltd., New York 1953.

Zabel. The Patent Royalty Contract. Prentice Hall, Inc., New York 1933.

Revise, Charles W. and Caesar, A. D. Interference Law and Practice. The Michie Company, Charlottesville, Virginia 1940.

Costa, Jasper Silva. Law of Inventing in Employment. Central Book Company, New York 1953.

Hayes, John Edward Rollins. The Nature of Patentable Invention, Second Edition. Adison-Wesley Press, Cambridge, Massachusetts 1948.

Costner, Thomas E. Patent Licensing Transactions. Matthew Bender and Company, Albany, New York.

Ellis, Ridsdale. Patent Claims. Baker, Voorhis and Company, Inc., New York 1955.

Patents, Research and Management, edited by Howard I. Forman. Central Book Company, New York 1961.

Bugbie, Bruce W. Genesis of American Patent and Copyright Law. Public Affairs Press, Washington, D.C. 1967.

Amdur, Leon H. Patent Law and Practice. Clark Boardman company, Ltd., New York 1935.

Scher, W. Alexander. Patenting the Invention, Application, Prosecution, Interference Proceedings. Matthew Bender and Company, Albany, New York 1948.

Stedman, Beirne. Patents. The Michie Company, Charlottesville, Virginia 1939.

Biesterfield, chester H. Patent Law for Lawyers, Students, and Engineers. John Wiley and Sons, New York 1949.

Smith, Arthur M. Patent Law: Cases, Comments and Materials. Overeck Company, Ann Arbor, Michigan 1954.

The United States Patent Quarterly: Cumulative Digests. The Bureau of National Affairs, Inc., Washington, D.C.

Underwood, R.L. Card Digest of Patent and Trademark Cases. Washington, D.C.

West's Federal Digest: Patents. West Publishing Company, St. Paul, Minnesota.

Corpus Juris Secundum: Patents. West Publishing Company, St. Paul, Minnesota.

In conducting a patent validity search and preparing for litigation, an attorney may recognize a need for expert witnesses and have to locate them. The engineering, chemistry, computer, or physics departments of universities may prove helpful for consulting. Independent research and testing laboratories, government departments, or retired members of engineering or government agencies are also invaluable sources. In addition to these possible witnesses may be obtained from various records and rosters of societies such as the following:

1.) Who Knows - And What - Among Authorities - Experts - And the Specially Informed, published by A.N. Markes & Co., Chicago, Illinois

2.) International Scientific Organizations published by the Government Printing Office.

3.) Who's Who in Engineering? Published by Lewis Historical Publishing Company.

4.) Research Centers Directory - Guide to University sponsored non-profit research organizations.

5.) Scientific and Technical Societies of the United States published by National Academy Of Sciences, Washington, D.C.

6.) Specialized Science Information Services in the United States published by the National Science Foundation, Washington, D.C.

7.) Directory of Information Resources in the United States - Physical Sciences, Biological, Engineering published by National Reference Center for Science & Technology, Government Printing Office.

In preparing for patent litigation, how much time should be spent on the search itself?

A patent validity search is the most exhaustive search that can be undertaken, and often it may never end. If a corporation has a vested interest in invalidating a competitor's patent, it may continue searching until it finds something it feels will accomplish this. Prior art exists worldwide everywhere in so many different places, that it is often impossible to be sure that you have "covered all the bases" when conducting a search. An invented technology could exist in another country, but may not be patented. It may be in a remote trade publication or journal which is hard to find. Therefore, in approaching a patent validity search, I would recommend that you conduct as thorough a search as your firm can, with the time and resources it has. There is no "set" or "right" time frame with which to complete such a search, but surely one has to weigh and balance the time spent with the importance of the search. In discussing this topic with an attorney from the firm of Hamilton, Brook, Smith & Reynolds, P.C., their firm will usually try to conduct a full patent validity search in two weeks utilizing one fully devoted partner with expertise in the area. But it was also noted that the more important the search is, the more time and resources they will allocate to it accordingly.

Should the search be conducted in house, or should you "farm" it out? What are the pros and cons of conducting the search in house? If the search is completed in house, whom is/are the indicated searchers? These are all questions which need to be asked every time a patent validity search is done. There is no right answer to these questions, and as you can probably see the factors will differ with each situation encountered. Most law firms and corporate departments don't have a uniform method, but what they do have is an array of factors they consider each time in determining whether to conduct the search in house or hire it out. Some of these factors are the purpose of the search, the type of search, the importance of the search, and the cost associated with it. Other factors might include the expertise of the attorneys in house and their knowledge in conducting such a search, the search capabilities in house, liability issues associated with "farming" the search out, the past performance of professional searchers, and the cost of conducting the search in house versus hiring it out.

If the search is to be conducted in house, you need to decide who is going to conduct it. In conducting a patent validity search, you need to have as complete and extensive a search as possible. To do this, a person should be chosen based on a balanced criteria. They should be well versed in the subject matter and have excellent searching skills. There are a lot of older attorneys that are authorities in their field, but haven't brought themselves up to speed with the new automated methods of searching. A lot of these new on-line databases have given the patent attorney an invaluable tool with which to save time and money in carrying out their searches. Therefore, the searcher must have both a knowledge of the topic and the skills necessary in today's workplace to conduct a comprehensive, cost-effective search, while minimizing the time it takes to do such.

http://ipmall.info/hosted_resources/tools_strategies/bp97/patentvalidity.htm

 My thoughts are that if you call ten brokers and ask their advice about buying PTSC stock, at least 9 of them will call their stock analyst and will then tell you it is too risky or that they do not make recommendations of unlisted major exchange stocks valued at less than $5.00.

Very few, if any brokerages, cover OTC BB penny stocks and as you suggest, it would be virtually impossible to receive a recommendation on PTSC from them.

In my opinion, something more than just more money in the bank must happen before the market gives recognition to the stock we owners believe has so much potential and I don’t think that just additional press releases will solve the problem.

 Given the dearth of information, I disagree that additional PR wouldn't bring new investors - let Hoffman loose and see what happens.

Thank you for your detailed reply which I appreciated, all that we await now is the 10Q, in tandem with much needed marketing to bring PTSC out of hibernation.

Be well