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   On-site vs. off-site searching at the PTO?
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   Author  Topic: On-site vs. off-site searching at the PTO?  (Read 1987 times)
GRS Research
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On-site vs. off-site searching at the PTO?
« on: Dec 27th, 2005, 12:19pm »
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Recently a potential client requested that I access the PTOs EAST system to conduct a patentability search.  I also note that a few patent search firms mention (tout) that they conduct their searches at the PTO. I, like many other professional prior art searchers, do not live near the PTO, yet serve our clients very well with comprehensive and valuable services.  I am interested in any opinions on the value of being on-site at the PTO to conduct a search vs. off-site, and specifically, how using the EAST system compares with the many commercial database options available to the searcher.
« Last Edit: Dec 29th, 2005, 12:15pm by GRS Research » IP Logged

Norm Gilman
Gilman Research Services, LLC
www.gilmanresearch.com
franlorin
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Re: On-site vs. off-site searching at the PTO?
« Reply #1 on: Dec 28th, 2005, 8:03am »
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on Dec 27th, 2005, 12:19pm, GRS Research wrote:
Recently a potential client requested that I access the PTOs EAST system to conduct a patentability search. I also note that a few patent search firms mention (tout) that they conduct their searches at the PTO. I, like many other professional prior art searchers, do live near the PTO, yet serve our clients very well with comprehensive and valuable services. I am interested in any opinions on the value of being on-site at the PTO to conduct a search vs. off-site, and specifically, how using the EAST system compares with the many commercial database options available to the searcher.

 
GRS:
whenever a client requests that a search be performed using EAST, it is my opinion that the requester assumes that the EAST system has the most up-to-date database records - this may be true for the most recently issued/published US documents, but it is not necessarily true for other patent documents, such EP and other foreign documents
 
also, searching EAST is much faster than using most other search engines, since very high-speed lines connect the EAST terminals with the computers that contain the databases - flip rates can be set faster than a person's ability to see the page
 
however, if the client wants a thorough worldwide patent search, EAST is not always the best system to use - one reason is that ECLA is not an available index field - another reeason is that EAST cannot match the comprehensive coverage of ep.espacenet.com for non-US patents
 
also, if a patent searcher fails to consider the best US classification areas, it does not matter at all whether EAST (or any other search engine) is used
 
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Fran Lorin
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Isaac
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Re: On-site vs. off-site searching at the PTO?
« Reply #2 on: Dec 28th, 2005, 4:04pm »
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I think one aspect of using EAST is that the searcher is suggesting that the search is similar to the one the patent office is going to conduct.   I think GRS has already commented on the pros and cons of this approach.
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Isaac
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Re: On-site vs. off-site searching at the PTO?
« Reply #3 on: Dec 28th, 2005, 6:08pm »
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on Dec 28th, 2005, 4:04pm, Isaac wrote:
I think one aspect of using EAST is that the searcher is suggesting that the search is similar to the one the patent office is going to conduct. I think GRS has already commented on the pros and cons of this approach.

 
however, the USPTO does NOT have any established or required search strategy, as one might know as an ex-examiner - the EAST system is merely a common search engine available on the USPTO campus in Alexandria (and maybe some depository libraries throughout the world) that accesses the existing databases
 
an examiner who fails to use the US classification system properly will have the same ineffective search results as anyone else
 
so, use of the EAST system does not quite guarantee in any way that a "proper search" or that a thorough search is performed - advertising that EAST is used in a search is really quite meaningless compared without an understanding of classification systems
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Fran Lorin
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Isaac
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Re: On-site vs. off-site searching at the PTO?
« Reply #4 on: Dec 29th, 2005, 6:27am »
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on Dec 28th, 2005, 6:08pm, franlorin wrote:

 
however, the USPTO does NOT have any established or required search strategy, as one might know as an ex-examiner - the EAST system is merely a common search engine available on the USPTO campus in Alexandria (and maybe some depository libraries throughout the world) that accesses the existing databases

 
Ouch.
 
That's right of course.  Search firms do sometimes brag about consulting the senior examiners for search strategies, having ex examiners on staff, as well being near the PTO and using EAST.   Obviously it's still possible to get a different result than any particular examiner might get.   And yes it is possible to perform a bad search with good tools.
 
My comment is not meant to make any judgment on the effectiveness of using EAST or any other resource.
 
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an examiner who fails to use the US classification system properly will have the same ineffective search results as anyone else.

 
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Isaac
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