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   Practice doing prior art searches
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smgsmc
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Practice doing prior art searches
« on: Sep 29th, 2006, 7:36am »
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From various posts, I gather that if you have passed the exam, have 0 experience, and are trying to get your foot in the door, it's not a good idea to take on cases just for the experience (whether it's for free or at a cut rate).  I know there's been several views on this.
 
But while I'm shipping out resumes and waiting for responses, I figured I might as well get experience in conducting prior art searches.   Could someone please tell me how to go about this?  Are there online databases that I can access from home?  Do I need to wait to get my actual registration number?  Any helpful guides or tutorials out there?  Thanks.
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Isaac
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Re: Practice doing prior art searches
« Reply #1 on: Sep 29th, 2006, 8:03am »
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on Sep 29th, 2006, 7:36am, smgsmc wrote:
From various posts, I gather that if you have passed the exam, have 0 experience, and are trying to get your foot in the door, it's not a good idea to take on cases just for the experience (whether it's for free or at a cut rate).  I know there's been several views on this.

 
IMO there's nothing wrong with taking on such cases provided you can get adequate mentoring.   Otherwise the result seems likely to be malpractice, poorly served clients, and an operation foot bullet to your budding career.
 
Quote:
But while I'm shipping out resumes and waiting for responses, I figured I might as well get experience in conducting prior art searches.   Could someone please tell me how to go about this?  Are there online databases that I can access from home?  Do I need to wait to get my actual registration number?  Any helpful guides or tutorials out there?  Thanks.

 
I recommend to inventors who want to do their own searches that they visit a Patent and Trademark Depository Library if there is one reasonably local.   Some of the web pages for the library (for example the one at NC state as I recall) include a tutorial on searching.   You can also get some assistance from library staff if you visit.
 
http://www.uspto.gov/go/ptdl/
 
Of course that resource only relates to searching the patent database.   Some of the database services for searching NPL also provide tutorials and training as well as search consultation help.
 
There is also some information about searching in Pressman's book Patent it Yourself
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Isaac
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Re: Practice doing prior art searches
« Reply #2 on: Sep 30th, 2006, 9:59pm »
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The PTO patent search site is not very good when compared to the premium sites for patent searching. However, if that is all that is available use it. Do word searches, pull relevant patents and plow through the patents listed on the pulled patents. What you can do is contact Lexis and see if they will provide a 30 trial account. If so, after you have spent time on the PTO site you will be ready for Lexis.
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patento
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Re: Practice doing prior art searches
« Reply #3 on: Oct 8th, 2006, 6:25pm »
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I am not sure how will you benefit from learning to do prior art searches. IMHO, this skill is not an important one for an attorney... For instance, I don't do prior art search before filing an application unless the app is very critical and/or inventor requests a search (in that case better to use outside search firms).  
 
Instead, why not pick up few published applications and patents in your area of interest and read them carefully. Pay attention to different parts of the app and details in the specification, claims construction. Pay attention to the claim format/language. Then pickup another patent/app, read the spec and try to construct the claims to compare how close you were in capturing the scope of the invention.
 
on Sep 29th, 2006, 7:36am, smgsmc wrote:
From various posts, I gather that if you have passed the exam, have 0 experience, and are trying to get your foot in the door, it's not a good idea to take on cases just for the experience (whether it's for free or at a cut rate).  I know there's been several views on this.
 
But while I'm shipping out resumes and waiting for responses, I figured I might as well get experience in conducting prior art searches.   Could someone please tell me how to go about this?  Are there online databases that I can access from home?  Do I need to wait to get my actual registration number?  Any helpful guides or tutorials out there?  Thanks.

« Last Edit: Oct 8th, 2006, 6:28pm by patento » IP Logged
smgsmc
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Re: Practice doing prior art searches
« Reply #4 on: Oct 8th, 2006, 7:12pm »
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on Oct 8th, 2006, 6:25pm, patento wrote:
I am not sure how will you benefit from learning to do prior art searches. IMHO, this skill is not an important one for an attorney... For instance, I don't do prior art search before filing an application unless the app is very critical and/or inventor requests a search (in that case better to use outside search firms).  
 
Instead, why not pick up few published applications and patents in your area of interest and read them carefully. Pay attention to different parts of the app and details in the specification, claims construction. Pay attention to the claim format/language. Then pickup another patent/app, read the spec and try to construct the claims to compare how close you were in capturing the scope of the invention.
 

 
Could you please clarify?  If I understand you correctly, patent agents/attorneys (or just attorneys?)  don't routinely do a prior art search for every application.  Is that correct?  I thought you would check to see whether the claimed invention is in fact novel...that is, whether someone else had already patented the idea before the client spends $$$ filing.  
 
You also mention farming out the search.  Is this standard procedure in the field?  That is, IP firms do not carry out their own searches?  I can see why an attorney may not want to, given high billable rates.  What about a patent agent?
 
Follow up question, then:  Is working for a search firm a way for a novice to get his foot in the door?   Thanks.
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