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Author Topic: Patent search in "Exotic" countries  (Read 1899 times)

dsplatonov

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Patent search in "Exotic" countries
« on: 01-08-11 at 05:30 am »

Hello everyone.
Recently i received an order. I need to do a patent search in the following countries: Azerbaijan, India, Iran, Turkey, United Arab Emirates, Kuwait, Mexico, Venezuela.
I googled a bit about ordering an Azerbaijan patent search, but there is no companies in the internet, that can do it.

Does this countries have an English translation of patent bases? If not, can you share a contact of patent attorneys, that can do a patent search.

Thanks in advance.
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klaviernista

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Re: Patent search in "Exotic" countries
« Reply #1 on: 01-10-11 at 02:58 pm »

Have you tried going to their PTO websites?  I just checked out the Azerbajini patent office's website.  Not only is it available in English, but it provides a list of registered agents.  I would contact one of identified agents and ask them to suggest how to best perform a search of their patent records.

Here is a link to the list on the azerbajani website:  http://www.azstand.gov.az/index.php?id=107&lang=3

For India, contact Lall Lahiri and Salhotra. http://www.lls.in/

For Mexico, contact Alegria, Mendez & fernandez Wong http://www.alemef.com.mx/

Most patent office websites can be found through WIPO.  See http://www.wipo.int/directory/en/urls.jsp

Note that the above referrals do not constitute an endorsment.  While I have had a good experience with the Lall Lahiri and Alegria firms, your experience may vary.



« Last Edit: 01-10-11 at 03:04 pm by klaviernista »
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bartmans

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Re: Patent search in "Exotic" countries
« Reply #2 on: 01-11-11 at 04:54 am »

Indeed, such a search can best be done by contacting local patent law firms. A comprehensive list of worldwide patent law firms may be found at this site: http://www.piperpat.com/WWAttorneys/tabid/295/Default.aspx
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dsplatonov

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Re: Patent search in "Exotic" countries
« Reply #3 on: 01-12-11 at 07:32 am »

Thanks for the links. It helped me.
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MYK

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Re: Patent search in "Exotic" countries
« Reply #4 on: 01-12-11 at 10:30 am »

I'm just curious, why do you need separate searches in each of those countries?  Some search firms have databases of publications from many countries.  One of my former managers used to do searches in German-, Japanese-, and English-language databases routinely.  Admittedly, the searches might not have been as thorough as those done by a native speaker, since the search tools he used targeted the abstracts of the publications.
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Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

dsplatonov

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Re: Patent search in "Exotic" countries
« Reply #5 on: 01-13-11 at 03:20 am »

It's a client choice. May be he wants to get a patent in those countries.
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Isaac

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Re: Patent search in "Exotic" countries
« Reply #6 on: 01-13-11 at 07:14 am »

It's a client choice. May be he wants to get a patent in those countries.

Is it an informed client choice?
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Isaac

JimIvey

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Re: Patent search in "Exotic" countries
« Reply #7 on: 01-13-11 at 01:36 pm »

It's a client choice. May be he wants to get a patent in those countries.

Is it an informed client choice?

I had a client make a similar choice once.  Yes, it was well informed.  I almost refused to do it.  He wanted to file in Iraq at the height of the war there, among other unlikely places, like Somalia.  Eventually, I convinced him to not file in most of those places, so I didn't have to refuse.  For Iraq, I think I couldn't even verify that they had a functioning patent office that could accept an application at the time.  And, without going into details, none of those jurisdictions would have made a difference in his strategy.  But he still really wanted them, until I asked for prepayment of estimated costs.

Note that the choice need only be informed, not reasonable.

By the way, if you have a client that might not be sophisticated and/or might not have infinite funding but is still ordering everything on the foreign patents menu, I strongly urge you to collect prepayment of estimated costs and hold them in a client trust fund account.  And, not just for initial filing, but for all prosecution.  It's hard to keep up with that sort of early attention to details and extra work of invoicing and collecting prepayments.  If you don't have the support in your practice to handle all that, you should think very carefully before accepting such work. 

An alternative is to provide contact information of foreign firms to the client and let them work directly with those firms.  Coordination for IDSs can be a bit of a challenge, but the alternative risks finding yourself owing foreign associates tens of thousands of dollars and learning that your client just ran out of money.

Regards.
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MYK

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Re: Patent search in "Exotic" countries
« Reply #8 on: 01-13-11 at 05:14 pm »

Somalia?!??  They don't even have a functioning government, much less a functioning patent office.

Maybe I should be really evil and set up an Antarctic Patent Office.  Running the patent system for a whole continent ought to get me lots of filings.  At least in the herring processing arts.
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Isaac

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Re: Patent search in "Exotic" countries
« Reply #9 on: 01-13-11 at 07:36 pm »

Note that the choice need only be informed, not reasonable.

Well it has to be legal as well.   And part of your job is to do some informing.  Sounds like you did your job.

But even given the need to file in exotic places, the need to conduct a pre-filing search in those countries does not necessarily follow.

« Last Edit: 02-01-11 at 02:38 pm by Isaac »
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Isaac
 



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