The patent issued at long last and everything is right with the world. . .
. . .or is it?

Patent Post-Granting Actions

TABLE OF CONTENTS
 
Introduction Sources Dialog®
Orbit Lexis® Directory of Electronic Public Access Services
Post-Granting Actions Reassignments
35 U.S.C. 261
Extensions
35 U.S.C.155, 37 C.F.R.1.701 et. seq.
Expirations
35 U.S.C. 41, 37 C.F.R. 1.362 et. seq.
Reinstatements Reissues
35 U.S.C. 251
Reexaminations
35 U.S.C. 302 et. seq.,
37 C.F.R. 1,510 et. seq.
Adverse Decisions Disclaimers and Dedications
35 U.S.C. 253, 37 C.F.R. 1.321
Litigation Overall Search Setting Conclusion

Introduction
There are many things that can happen both to and with a patent after it has been granted. For example, a patent may contain errors. Errors may be corrected in four (4) ways: 1) by reissue, 2) by the issuance of a certificate of correction, 3) by disclaimer, and 4) by reexamination. When a patent first issues it must be proofread for errors. If any are found, but are not significant, a simple "make-of-record" letter containing the patent number, issue date, patentee(s) and a list of the errors should be sent to the U.S. Patent and Trademark Office (PTO) to be put in the file with the patent. If the errors are significant, a Certificate of Correction can be obtained. If the errors are the fault of the printer, the certificate is issued free of charge. Otherwise, if the errors are the fault of the patent drafter and have been made in good faith, a certificate can be issued for a fee. Certificates of Correction can be searched in LEXIS® (library LEXPAT® or PATENT, file REISS or REEXAM, descriptor CERTCORR)

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Sources
There are numerous online patent database services, but the data contained within any one of their products issues from the patent office. In the United States, the PTO publishes the Official Gazette on a weekly basis. The Official Gazette contains information on all patent actions. Patent offices throughout the world issue similar publications. Patent and Trademark Depository Libraries (PTDLs) have recent paper copies and past copies on microfiche of the Official Gazette, as well as copies of patents on microfilm. The reasons for selecting an online database product over such publications are even more numerous than the number of vendors. However, a primary consideration is the value added by the service; each one adds its own special enhancement to different databases which may or may not sway the selection choice in its favor.

Because there are so many services, a comprehensive listing can be more of a hindrance than a help. The foremost patent database services are DIALOG® and Questel-Orbit. DIALOG® can be accessed directly using nearly any type communication software or DIALOG®'s custom communications software, DialogLink®. Telnetting to dialog.com will also work. DialogWeb is on the Internet at 'http://dialog.krinfo.com'. DIALOG® is also available on CompuServe (CompuServe membership required). WESTLAW®, a separate online service, provides a gateway to DIALOG® (DIALOG-GW) and their own access to all DIALOG® databases via the DIALOG® selection on their topical menu. User IDs and passwords are required to use DIALOG® databases, and costs apply, regardless of the connection method chosen; a separate WESTLAW® ID and password are additionally required to access WESTLAW®. Questel-Orbit is the merger of two (2) database services. Questel's databases are primarily in French, Orbit's, English. Questel-Orbit also provides its own communications software package, Imagination. Orbit databases can be accessed on the Internet at 'http://www.orbit.com'. Again IDs and passwords are required for access in order to facilitate billing. The PTO produces some databases; LEXIS®, a fourth online service, provides access to some such databases, but require a LEXIS® user ID and password for which, of course, there is a charge. The Internet has various Web pages dedicated to patents. For example, when searching for patent litigation information, the Directory of Electronic Public Access Services (http://www.uscourts.gov/PubAccess.html) lists several sources for obtaining such data. Access to the Internet can be gained through any Internet provider for a price.
 

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DIALOG®
(http://dialog.krinfo.com)

DIALOG® organizes the data into files, divided further by records, and finally broken down into individual character strings. Many, but not all, of the databases are available through other services. DIALOG®, while containing numerous Intellectual Property databases, does not specialize in any specific area. DIALOG® has access both by a command interface and through a Windows-type "point and click" interface. Searching for patent post-granting actions is best accomplished mainly through four (4) files/file groupings:

1) CLAIMS/REASSIGNMENT & REEXAMINATION, File 123;

2) U.S. PATENTS FULLTEXT, Files 652, 653, 654 and/or PATFULL;

3) LITALERT, File 670; and

4) INPADOC/Family and Legal Status, File 345.

CLAIMS/REASSIGNMENT & REEXAMINATION, File 123, contains information on the current status of U.S. patents, including reassignments, reexaminations, extensions, expirations, and reinstatements from 1980 until the present. DIALOG®'s current awareness alert service is available for this database.(1) 

U.S. PATENTS FULLTEXT, Files 652 (1971-1979), 653 (1981-1989), 654 (1990 to present) and/or PATFULL (Files 652, 653 and 654), contain the complete text (not including drawings) of all granted U.S. utility patents, defensive publications, and design and plant patents. It is a full text database. DIALOG®'s current awareness alert service is available for this database.(2) 

It is the only database on DIALOG® with the enabling disclosure, the best mode, and the invention background, making it a [better] place to conduct a broad prior art search.(3) 

LITALERT, File 670, contains over 34,000 notices of patent and trademark infringement suits reported to the PTO by US District Courts. LITALERT is best used to perform validity studies and legal status checks, monitor clients' and their competitors' holdings and obtain docket numbers for cases in US District Court.(4) 

INPADOC/Family and Legal Status, File 345, is a listing of patents issued by fifty-eight (58) countries and patenting organizations (with equivalent patents grouped with patent family records), plus legal status information for many patents. DIALOG®'s current awareness alert service is available for this database.(5) 

Priority levels and details are provided for each document. All Japanese technologies (except mechanical patents) are covered, but not everything is in English. INPADOC is invaluable when trying to determine if a patent is still valid (i.e., did the owners fail to pay a maintenance fee) or if it is involved in potential problems (i.e., as part of an interference or has been reassigned or is under reexamination) or just to see what its legal status is in sixteen (16) countries. Another strength of INPADOC is its complete family information based upon sixty-four (64) countries. Full legal status can be typed out for individual countries.(6)
 

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Orbit
(http://orbit.com)

Orbit also organizes the data into files, divided further by records, and finally broken down into individual character strings. Again, many, but not all, of the databases are available through other services. Orbit provides comprehensive patent coverage; the company emphasizes Intellectual Property. Orbit is accessed through a command interface; some work is being done to develop a Windows-type point and click interface. Patent post-granting actions are best researched in five (5) files/file groupings:

1) CLAIMS REASSIGNMENTS, File CRXX;

2) INPADOC/INPANEW, Files INPD and INPN;

3) LEGAL STATUS, File LGST;

4) LITALERT, File LITA; and

5) PATENT STATUS FILE, File PAST.

CLAIMS REASSIGNMENTS, File CRXX, provides information about more than 228,000 U.S. patents that have been reassigned since 1980, or re-examined since 1981. It also contains information about patents that have expired since 1985 and patents that have been granted extensions since 1986.(7)

INPADOC/INPANEW, Files INPD and INPN, cover patent documents issued by more than fifty (50) national and international patent offices. Bibliographic information is searchable, including inventor names, assignees (applicants), international patent classification codes, and in most cases, titles, as well as complete publication and application data. INPANEW is designed for current awareness, containing the most recent six (6) to ten (10) weeks of INPADOC data.(8)

LEGAL STATUS, File LGST, records thousands of types of actions that can affect the legal status of a patent document after it is published and after the patent is granted. Many of these change the nature of the protection granted to the patent owner. Information about the disposition of patent applications published under the PCT by the WIPO is included.(9)

LITALERT, File LITA, includes more than 20,000 notices of filings and subsequent actions for patent and trademark infringement suits filed in U.S. District Courts and reported to the Commissioner of Patents and Trademarks.(10)

PATENT STATUS FILE, File PAST, provides a comprehensive alert to more than twenty (20) types of post-issue actions affecting U.S. patents. It includes actions since 1973 affecting over 200,000 patents dating back to 1969.(11)
 

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LEXIS®

LEXIS® organizes the data into libraries, divided further by files, then documents, followed by segments and finally broken down into individual character strings. LEXIS® provides a combination command interface and Windows-type point and click interface. Through LEXPAT®, its Patent and Trademark Office Library, LEXIS® provides access to the full text of U.S. patents from 1976 as well as the following updated information: assignments, Certificates of Correction, term extensions, adverse decisions, reexamination certificates, reissues, disclaimers, dedications and litigation notices.(12)

The Patent Law Library, PATENT, contains all of the materials available in LEXPAT® plus patent related federal case law, code, legislation, PTO administrative decisions, patent law periodicals and prior art research files.(13)

Several files contained within these libraries are of special interest when researching patent post-granting actions. These are:

1) ALL;

2) ASSIGN;

3) REEXAM; and

4) REISS.

ALL, found in the LEXPAT®, PATENT and TORTS libraries, is a combined file of full text utility, plant and design patents. Included in this file are reissue patents and reexamination certificates.(14)

ASSIGN, found in both the LEXPAT® and PATENT libraries, contains assignee and class information for all patent documents issued by the USPTO.(15)

REEXAM, also in both libraries, contains the full text of reexamination certificates issued by the USPTO.(16)

REISS, again in both libraries, contains the full text of reissued patents issued by the USPTO.(17)
 

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Directory of Electronic Public Access Services
(http://www.uscourts.gov/PubAccess.html)

This online directory to federal court information has been offered by the federal judiciary for eight (8) years. The listed services receive more than seven (7) million calls per year. The list includes both online and offline services. Information contained in listings includes: contents of services, costs, access instructions and use instructions. If the docket number is known, one of these services may be the fastest way to retrieve litigation status data. The following services are currently listed:

U.S. Supreme Court Electronic Bulletin Board System: online access to information such as the Court's docket, special notices and general information, to name a few; currently free.

U.S. Supreme Court Clerk's Automated Response Systems (CARS): obtain the status of cases on the Court's docket using a standard touch-tone phone; currently free.

ABBS (Appellate Bulletin Board System): electronic access to appellate court decisions and other court information; user fee charged.

PACER (Public Access to Court Electronic Records): dial-in to court computers and retrieve official electronic case information; registration prior to use required, costs apply.

Electronic Filing & Attorney Docketing Service: allows attorneys to electronically submit pleadings to the court.

PACER Service Center Electronic Bulletin Board: court data available 24 hours a day, seven (7) days a week via an 800 computer number; modem required, free to current PACER, NIBS or ABBS registrants.

VCIS (Voice Case Information System): touch-tone telephone inquiries concerning a limited amount of bankruptcy cases; currently free.

Other online directories may be found by utilizing any of the Internet search engines (e.g. Excite, Lycos) and searching for patent information.
 

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Post-Granting Actions

The systems currently track nine (9) main categories of patent post-granting actions. These are: reassignments, extensions, expirations, reinstatements, reissues, reexaminations, adverse decisions, disclaimers/dedications, and litigation.
 

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Reassignments 35 U.S.C. 261

Description:
Because a patent is a type of property, it can be sold (assigned) to others. An assignment is a document that transfers a patent owner's rights in exchange for some type of consideration. A patent reassignment occurs when its ownership is transferred from the original or current assignee to another company or individual. Many inventors assign their inventions to the companies they work for under an employment agreement. Independent inventors may assign their inventions to outside development or manufacturing companies. These reassignments typically transfer ownership of any patent that issues on the invention and may provide for compensation for the inventor. Typically, however, employed inventors often receive little or no additional compensation because they are getting paid to invent. Only an original or true copy of an assignment will be accepted by the PTO. There is a required fee.

Applicable Sources:

Service FILE Reassignment Search Descriptors Comments Producer
DIALOG® CLAIMS/ REASSIGNMENT & REEXAMINATION, File 123 CO=[all patent assignees, past and present] 

DT= REASSIGNED 

PA= [original patent assignee (assignor)] 

PN= [patent number] 

RA= [new patent assignee and other reassignment data] 

RD= [reassignment date recorded by PTO] 

RF= [reassignment microfilm frame] 

RG= [assignor name] 

RK= [reassignment kind] 

RR= [reassignment microfilm reel]

Data obtained from USPTO Official Gazette; Reassigned patents from 1980; Approximately 501,000 records as of July 1995; Updated every two (2) months; U.S. only.(18) IFI/Plenum Data Corp.
Orbit CLAIMS/RRX, File CRXX [patent number]/PN 

/PA [patent assignee] 

REASSIGNED/ACT 

[action date]/AD 

[rangeable action date]/RAD 

REASSIGNED/CO 

[reassignment information]/RA

Provides information on U.S. Patents which have been reassigned from 1980 to date; Approximately 548,000 records as of January 1996; Updated six (6) times per year; REASSIGNED/ACT provides date recorded, 'REASSIGNED', description of action, and microfilm reel & frame numbers.(19) IFI/Plenum Data Corp.
DIALOG® U.S. PATENTS FULLTEXT, Files 652, 653, 654, PATFULL (opens Files 652, 653 and 654 together) CK= [assignee code (original assignee)] 

CN= [named country (assignee)] 

CO= [assignee] 

DT= REASSIGNED 

EN= [entity of assignee] 

PA= [assignee] 

PA= [assignee country] 

PN= [patent number] 

RA= [assignee (post-issuance)] 

RG= [assignor] 

RK= [assignment brief] 

Full text obtained from USPTO; post-issuance data from IFI/Plenum; includes all: granted U.S. utility patents, defensive publications, design patents, reissue patents, statutory invention registrations (S.I.R.s), and plant patents; over 1.4 million records as of April 1993; File 654 - 1990 to present; File 653 - 1980 through 1989; File 652 - 1971 through 1979 (selective coverage 1971-3); updated weekly.(20) Knight-Ridder Information, Inc.
LEXIS®  ASSIGN (found in libraries: LEXPAT® or PATENT)  AFTER-ISSUE => name and address of all parties who have held the rights if those rights have been assigned after issue. 

ASSIGNEE => name and address of the current and previous holders of the rights. 

AT-ISSUE => name and address of the holder of the rights at the time of issue. 

DATE => date issued; date searchable. 

INVENTOR => name of the inventor(s) and their city and state (or country) of residence. 

PATNO => patent number; arithmetically searchable.

Assignee and class information for all patent documents issued by the USPTO since 1971; Updated weekly (usually on Tuesday); Segment searches recommended.(21) USPTO
 

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Extensions 35 U.S.C. 155, 37 C.F.R. 1.701 et. seq.

Description:
The normal term for a patent may be extended if the time needed for federal approval of a product has effectively shortened the normal patent protection time period and no previous extensions have been granted. This situation arises with patents involving drugs, medical devices, or food or color additives. Patents may also be extended if the issuance of the patent was delayed due to interference proceedings, being placed under a secrecy order and/or appellate review. The total duration for all extensions is limited to five (5) years.

Applicable Sources:

Service File Extension Search Descriptors Comments Producer
DIALOG® CLAIMS/ REASSIGNMENT & REEXAMINATION, File 123 DT= EXTENDED 

PN= [patent number] 

XD= [extension date] 

XG= [date extension recorded in OG] 

Data obtained from USPTO Official Gazette; Extended from April 1986; Approximately 501,000 records as of July 1995; Updated weekly; U.S. only.(22) IFI/Plenum Data Corp.
Orbit CLAIMS/RRX, File CRXX [patent number]/PN 

EXTENDED/ACT 

[action date]/AD 

[rangeable action date]/RAD 

EXTENDED/CO 

Provides information on U.S. Patents which have been extended since 1986; Approximately 548,000 records as of January 1996; Updated six (6) times per year; EXTENDED/ACT provides issue date of Official Gazette where extension was announced, 'EXTENDED', length of extension, certificate date of extension.(23) IFI/Plenum Data Corp.
DIALOG® U.S. PATENTS FULLTEXT, Files 652, 653, 654, PATFULL (opens Files 652, 653 and 654 together) DT= EXTENDED 

PN= [patent number]

Full text obtained from USPTO; post-issuance data from IFI/Plenum; includes all: granted U.S. utility patents, defensive publications, design patents, reissue patents, statutory invention registrations (S.I.R.s), and plant patents; over 1.4 million records as of April 1993; File 654 - 1990 to present; File 653 - 1980 through 1989; File 652 - 1971 through 1979 (selective coverage 1971-3); updated weekly.(24) Knight-Ridder Information, Inc.
 

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Expirations 35 U.S.C. 41, 37 C.F.R. 1.362 et. seq.

Description:
A patent expires prematurely when the normal maintenance fees are not paid to the PTO. Under the U.S. maintenance fee system, a granted patent will remain in force for the twenty (20) years from the filing date of its application, provided three (3) maintenance fees are paid at years three (3), seven (7) and eleven (11). If no maintenance fees are paid, the patent will expire four (4) years from the date of granting. If the first maintenance fee has been paid, the patent will be extended to expire eight (8) years from the date of granting. If the second, much more expensive, maintenance fee has been paid, it will be extended to expire twelve (12) years from the date of granting. If the third, even more expensive, maintenance fee has been paid, the patent will expire at the end of the full twenty (20) years. There is a six (6) month payment period after each payment due date. In addition, there is a six (6) month grace period following the payment period during which payment will be accepted with a required penalty or surcharge. The PTO will not accept a maintenance fee before its due period. An expired patent can be revived by petition if it is shown, by declaration, that the payment delay was "unavoidable" or "unintentional." An example of an "unavoidable" delay would be if the patent owner's house burnt down. An "unintentional" delay is simply that. In either case, the petition must be accompanied by the maintenance fee, the maintenance fee transmittal letter and the appropriate penalty fee. It must be filed within two (2) years after the end of the grace period.

Applicable Sources:

Service File Expiration Search Descriptors Comments Producer
DIALOG® CLAIMS/ REASSIGNMENT & REEXAMINATION, File 123 DT= EXPIRED 

ED= [expiration date] 

EG= [date expiration recorded in OG] 

PN= [patent number]

Data obtained from USPTO Official Gazette; Expired from September 1985; Approximately 501,000 records as of July 1995; Updated weekly; U.S. only.(25) IFI/Plenum Data Corp.
Orbit CLAIMS/RRX, File CRXX [patent number]/PN 

EXPIRED/ACT 

[action date]/AD 

[rangeable action date]/RAD 

EXPIRED/CO

Provides information on U.S. Patents which have expired since 1985 due to non payment of maintenance fees; Approximately 548,000 records as of January 1996; Updated six (6) times per year; EXPIRED/ACT provides issue date of Official Gazette where expiration was announced, 'EXPIRED'.(26)  IFI/Plenum Data Corp.
DIALOG® U.S. PATENTS FULLTEXT, Files 652, 653, 654, PATFULL (opens Files 652, 653 and 654 together) DT= EXPIRED 

PN= [patent number]

Full text obtained from USPTO; post-issuance data from IFI/Plenum; includes all: granted U.S. utility patents, defensive publications, design patents, reissue patents, statutory invention registrations (S.I.R.s), and plant patents; over 1.4 million records as of April 1993; File 654 - 1990 to present; File 653 - 1980 through 1989; File 652 - 1971 through 1979 (selective coverage 1971-3); updated weekly.(27) Knight-Ridder Information, Inc.
 

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Reinstatements

Description:
Fees must be paid to the PTO, or the patent office of the country where a patent has been obtained, to keep an issued patent in effect (See Expirations above.). Expired patents may be reinstated if late payment of the maintenance fees is accepted.

Applicable Sources:
Service File Reinstatement Search Descriptors Comments Producer
DIALOG® CLAIMS/ REASSIGNMENT & REEXAMINATION, File 123 DT= REINSTATED 

ID= [reinstatement date] 

IG= [date reinstatement recorded in OG] 

PN= [patent number]

Data obtained from USPTO Official Gazette; Reinstated from October 1986; Approximately 501,000 records as of July 1995; Updated weekly; U.S. only.(28) IFI/Plenum Data Corp.
Orbit CLAIMS/RRX, File CRXX [patent number]/PN 

REINSTATED/ACT 

[action date]/AD 

[rangeable action date]/RAD 

REINSTATED/CO 

Provides information on U.S. Patents which have been reinstated; Approximately 548,000 records as of January 1996; Updated six (6) times per year; REINSTATED/ACT provides issue date of Official Gazette where reinstatement was announced, 'REINSTATED'.(29)  IFI/Plenum Data Corp.
DIALOG® U.S. PATENTS FULLTEXT, Files 652, 653, 654, PATFULL (opens Files 652, 653 and 654 together) DT= REINSTATED 

PN= [patent number]

Full text obtained from USPTO; post-issuance data from IFI/Plenum; includes all: granted U.S. utility patents, defensive publications, design patents, reissue patents, statutory invention registrations (S.I.R.s), and plant patents; over 1.4 million records as of April 1993; File 654 - 1990 to present; File 653 - 1980 through 1989; File 652 - 1971 through 1979 (selective coverage 1971-3); updated weekly.(30) Knight-Ridder Information, Inc.
 

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Reissues 35 U.S.C. 251

Description:
A patent owner may apply for a reissue patent for several reasons, among them: 1) the claims are too narrow or too broad; 2) the disclosure contains inaccuracies; 3) applicant failed to or incorrectly claimed foreign priority; 4) applicant failed to make reference to or incorrectly made reference to prior copending applications. If the reissue seeks to enlarge the scope of the claims, the reissue patent must be applied for within two (2) years of the issue date of the original patent. If issued, the reissue patent takes the place of the original patent and expires when the patent would have. Reissue patents are relatively rare because the patent prosecution process tends to make the claims both accurate and as broad as the PTO will allow. No new matter may be introduced through an application for reissue.

Applicable Sources:
Service File Reissue Search Descriptors Comments Producer
DIALOG® U.S. PATENTS FULLTEXT, Files 652, 653, 654, PATFULL (opens Files 652, 653 and 654 together) /RE => retrieves REISSUE records 

AD= [application date of original patent] 

PD= [patent date of original patent] 

PN= [patent number of original patent] 

PY= [publication year]

Full text obtained from USPTO; post-issuance data from IFI/Plenum; includes all: granted U.S. utility patents, defensive publications, design patents, reissue patents, statutory invention registrations (S.I.R.s), and plant patents; over 1.4 million records as of April 1993; File 654 - 1990 to present; File 653 - 1980 through 1989; File 652 - 1971 through 1979 (selective coverage 1971-3); updated weekly.(31) Knight-Ridder Information, Inc.
LEXIS®  REISS (found in libraries: LEXPAT® , PATENT or TORTS) PATNO => patent number; arithmetically searchable. 

REISSUE => number and date for reissued patent; only found in original patent. 

REL-US-DATA => related U.S. application data (divisions, continuations, abandonments).

Contains the full text of reissued patents issued by the USPTO since 1975; updated weekly (usually on Tuesday).(32) USPTO
LEXIS®  ALL (found in libraries: LEXPAT® , PATENT or TORTS) includes REISS Combined file of the full text utility, plant and design patents, including reissue patents, reexamination certificates, statutory invention registrations and defensive publications since 1971; updated weekly (usually on Tuesday); updated bi-monthly (even months) for assignee and us-class changes.(33) USPTO
 
 
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Reexaminations 35 U.S.C. 302 et. seq., 37 C.F.R. 1,510 et. seq.

Description:
A reexamination is a formal proceeding held by the PTO in which it reexamines an in-force patent to determine whether newly-cited prior art references adversely affect its the validity. A patent is subject to reexamination any time while it is in-force. Anyone may initiate the reexamination; the requester's identity can be kept confidential. The requester must pay a reexamination fee. The requester must also describe the pertinence of the prior art references to the validity of every claim for which reexamination is requested. The PTO has three (3) months to decide whether a "substantial new question of patentability has been raised." If not, the requester will be refunded most of the reexamination fee; the PTO keeps the rest. If the requester adequately demonstrates why prior art references are relevant, the patent will be reexamined and the claims possibly rejected or amended based on the prior art. If a reexamination finds that the patent claims are still valid, the PTO will issue a certificate of patentability. If it finds that one or more claims are not valid as drafted, the inventor may redraft the claims to the patent examiner's satisfaction. If this occurs, the amended claims will be assigned the original filing date. The patent reexamination process is both a viable alternative and a helpful supplement to litigation. The issuance of a certificate of patentability will weigh almost conclusively in favor of the patent holder. Conversely, a certificate of unpatentability will improve the strength of the defendant's case. This determination prior to litigation can save both parties time and money.

Applicable Sources:
Service File Reexamination Search Descriptors Comments Producer
DIALOG® CLAIMS/ REASSIGNMENT & REEXAMINATION, File 123  /TX => text of reexamination claim 

DT= REEXAMINATION 

or 

REEXAMINATION REQUESTED 

PD= [patent issue date and/or reexamination certificate date] 

PN= [patent number] 

QG= [date reexamination request recorded in OG] 

RC= [reexamination certificate number and sequence] 

RE= [reexamination request number and date] 

RL= [reexamination requester city and/or state] 

RL= [reexamination requester country code] 

RQ= [reexamination requester name]

Data obtained from USPTO Official Gazette; Reexamined from 1981; Approximately 501,000 records as of July 1995; Updated weekly; U.S. only.(34) IFI/Plenum Data Corp.
Orbit CLAIMS/RRX, File CRXX [patent number]/PN 

REEXAMINED/ACT 

[action date]/AD 

[rangeable action date]/RAD 

REEXAMINED/CO 

/RX [reexamination information] 

/CLM [reexamination claim]

Provides information on U.S. Patents which have been reexamined from 1981 to date; Approximately 548,000 records as of January 1996; Updated six (6) times per year; REEXAMINED/ACT provides certificate date, 'REEXAMINED', patent or certificate number, sequence number, request number, name & address of requester, request date, claim.(35)  IFI/Plenum Data Corp.
DIALOG® U.S. PATENTS FULLTEXT, Files 652, 653, 654, PATFULL (opens Files 652, 653 and 654 together) DT= REEXAMINED 

PN= [patent number] 

RC= [certificate number and sequence] 

RE= [request number] 

RQ= [requester]

Full text obtained from USPTO; post-issuance data from IFI/Plenum; includes all: granted U.S. utility patents, defensive publications, design patents, reissue patents, statutory invention registrations (S.I.R.s), and plant patents; over 1.4 million records as of April 1993; File 654 - 1990 to present; File 653 - 1980 through 1989; File 652 - 1971 through 1979 (selective coverage 1971-3); updated weekly.(36) Knight-Ridder Information, Inc.
LEXIS®  REEXAM (found in libraries: LEXPAT® , PATENT or TORTS) PATNO => patent number; arithmetically searchable. 

REEX-CERT => identifies as Reexamination Certificate; contains number and sequence. 

REF-CITED => references to U.S. and foreign patents & publications cited by examiner as relevant. 

REL-US-DATA => related U.S. application data (divisions, continuations, abandonments).

Contains the full text of Reexamination Certificates issued by the USPTO since 1981; updated weekly (usually on Tuesday).(37) USPTO
LEXIS®  REISS (found in libraries: LEXPAT® , PATENT or TORTS) LIT-REEX => notifies when request for reexamination or notice of litigation has been made. 

PATNO => patent number; arithmetically searchable.

Contains the full text of reissued patents issued by the USPTO since 1975; updated weekly (usually on Tuesday).(38) USPTO
LEXIS®  ALL (found in libraries: LEXPAT® , PATENT or TORTS) includes REEXAM Combined file of the full text utility, plant and design patents, including reissue patents, reexamination certificates, statutory invention registrations and defensive publications since 1971; updated weekly (usually on Tuesday); updated bi-monthly (even months) for assignee and us-class changes.(39) USPTO
 
 
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Adverse Decisions

Description:
Interference actions resulting in adverse decisions will adversely affect the patent owner's rights to the patent. An "interference" is a patent term for an administrative proceeding scheduled by the PTO to determine who gets the patent in situations where two pending applications (or a pending application and a patent issued within one year of the pending application's filing date) both claim the same invention. Adverse decisions may also be the result of an infringement suit. (See Litigation below.).

Applicable Sources:
Service File Adverse Decision Search Descriptors Comments Producer
DIALOG® CLAIMS/ REASSIGNMENT & REEXAMINATION, File 123 /TX => text of disclaimer/dedication 

DT= ADVERSE DECISION 

PN= [patent number] 

VD= [adverse decision date] 

VG= [date adverse decision recorded in OG] 

VN= [adverse decision number]

Data obtained from USPTO Official Gazette; Records include text, patent number, date, date recorded in the Official Gazette and number.(40) IFI/Plenum Data Corp.
 
 
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Disclaimers and Dedications 35 U.S.C. 253, 37 C.F.R. 1.321

Description:
There are two (2) type of disclaimers: statutory and terminal. Under a statutory disclaimer, a patent owner may disclaim a complete claim or claims of a patent. This can be the result of a lawsuit or the belief that the claim or claims are too broad or invalid. A terminal disclaimer allows the patent owner to disclaim or dedicate to the public the entire term or some portion of the term of a patent. The disclaimer must be in writing and accompanied by the appropriate fee. This disclaimer becomes part of the original patent.

Applicable Sources:
Service File Disclaimers & Dedications Search Descriptors Comments Producer
DIALOG® CLAIMS/ REASSIGNMENT & REEXAMINATION, File 123 /TX => text of disclaimer/dedication 

DT= DISCLAIMER/DEDICATION 

DD= [disclaimer/dedication date] 

DG= [date disclaimer/dedication recorded in OG] 

PN= [patent number]

Data obtained from USPTO Official Gazette; Records include text, patent number, date and date recorded in the Official Gazette.(41) IFI/Plenum Data Corp.
DIALOG® U.S. PATENTS FULLTEXT, Files 652, 653, 654, PATFULL (opens Files 652, 653 and 654 together) DD= [disclaimer date] 

PN= [patent number]

Full text obtained from USPTO; post-issuance data from IFI/Plenum; includes all: granted U.S. utility patents, defensive publications, design patents, reissue patents, statutory invention registrations (S.I.R.s), and plant patents; over 1.4 million records as of April 1993; File 654 - 1990 to present; File 653 - 1980 through 1989; File 652 - 1971 through 1979 (selective coverage 1971-3); updated weekly.(42) Knight-Ridder Information, Inc.
LEXIS®  REEXAM (found in libraries: LEXPAT® , PATENT or TORTS) DISCLAIMER => disclaimer of dedication information. 

PATNO => patent number; arithmetically searchable.

Contains the full text of Reexamination Certificates issued by the USPTO since 1981; updated weekly (usually on Tuesday).(43) USPTO
LEXIS®  REISS (found in libraries: LEXPAT® , PATENT or TORTS) DISCLAIMER => disclaimer of dedication information. 

PATNO => patent number; arithmetically searchable.

Contains the full text of reissued patents issued by the USPTO since 1975; updated weekly (usually on Tuesday).(44) USPTO
LEXIS®  ALL (found in libraries: LEXPAT® , PATENT or TORTS) includes REEXAM and REISS Combined file of the full text utility, plant and design patents, including reissue patents, reexamination certificates, statutory invention registrations and defensive publications since 1971; updated weekly (usually on Tuesday); updated bi-monthly (even months) for assignee and us-class changes.(45) USPTO
 

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Litigation

Description:
A patent owner may sue anyone believed to have been using part or all of the patent without permission; this is a patent infringement suit. The defendant in such a case may attack the validity of the patent as a defense. Alternatively, the defendant may also base a defense on some pre- or post-granting conduct of the patent owner. An infringement suit is the only way a patent can be contested.

Applicable Sources:
Service File Litigation Search Descriptors Comments Producer
DIALOG® LITALERT, File 670 /AT => action taken 

/PATENT 

/TI => patent case title 

DF= [defendant] 

DN= [docket number] 

FD= [litigation filing date] 

PF= [plaintiff] 

RT=PATENT 

SD= [subsequent action taken] 

SF= [special feature] 

YF= [year litigation filed] 

YS= [year of subsequent action]

Full text for patent infringement lawsuits filed in ninety-four (94) U.S. District Courts and reported to the USPTO from 1970 to the present; updated weekly; 34,000 records as of October 1996; records for thousands of lawsuits filed since early 1970s but never published in Official Gazette.(46) Derwent
Orbit LITALERT, File LITA [plaintiffs]/PF 

[defendants]/DF 

/CT [court] 

[docket number]/DN 

[filing date or ranging]/FD 

[action date or ranging]/AD 

/ACT [action] 

/NO [note] 

[patent number]/PN

Information on U.S. patent and trademark litigation; infringements suits filed in ninety-four (94) U.S. District Courts; thousands of suits filed since the early 70;s but never reported in the Official Gazette; 33,000 records as of January 1996; updated weekly, coverage from 1970 to present.(47) Rapid Patent Service, Research Publications, Inc.
DIALOG® INPADOC/FAMILY AND LEGAL STATUS, Files 345 and 253 (ONTAP) /LS => legal status text 

DT= [legal document type] 

LC= [legal status code] 

LD= [legal status date] 

PN= [patent number]

A listing of patents issued in 55 countries, 1968 to present (File 345) and Dec. 1982 through March 1983 (File 253); File 345 updated weekly; File 253 closed; 11,282,8623 million patent family records (File 345) as of January 1993; 50,000 patent family records (File 253); data processed by European Patent Office (EPO) made available by cooperating patent office in 55 countries, the EPO, and PCT members; legal status information for Austria, Switzerland, the Federal Republic of Germany, Denmark, the EPO, France, the United Kingdom, the Netherlands, the United States, and WIPO.(48) International Patent Documentation Center
Orbit INPADOC/INPANEW, Files INPD and INPN [patent number]/PN  Bibliographic information for patent documents issued by over fifty national and international patent offices; most major patent offices - 1968 to present; most other offices - 1973 to present; updated weekly; nearly 25 million records as of January 1996; approximately 1 million records added each year; INPANEW contains 6-10 weeks of the most current INPADOC data.(49) European Patent Office (EPO)
Orbit LEGAL STATUS, File LGST [action date]/AD 

[status indicator]/SI 

[action taken]/ACT 

[patent number]/PN

Thousands of different types of actions which can affect the legal status after publication; coverage from late 1960's; coverage varies from office to office; updated weekly; over 9,300,000 records as of January 1996; approximately 600,00 records added each year.(50) European Patent Office (EPO)
Orbit PATENT STATUS FILE, File PAST /PN [patent number] 

/ACT [action]

Online version of printed publication of the same name; provides post issuance actions of U.S. patents including design, utility, plant, and defensive patents, and statutory invention registrations; over 515,000 records available as of January 1996; coverage from 1973; updated monthly; approximately 20,000 new entries per year.(51)  Rapid Patent Service, Research Publications, Inc.

LEXIS® and WESTLAW® , both having the legal profession as their primary customers, each have numerous databases containing litigation data related to Intellectual Property in general, and patents in particular.

These are a few which LEXIS® has in the LEXPAT® and PATENT libraries:
File Description
IPOMNI Intellectual Property (patent, copyright, trademark, unfair competition and trade secret) federal cases, Trademark Trial and Appeal Board, Commissioner of Patents and Trademarks, Board of Patent Appeals and Interferences, PTO Board of Appeals, International Trade Commssion Series 337 and 732 and Code of Federal Regulations Title 19 and Title 37.(52)
FEDCTS Patent related case law from the federal courts.(53)
CCPA Court of Customs and Patent Appeals from 1952 to 1982.(54)
CAFC Court of Appeals for the Federal Circuit (patent cases) from 1982.(55)
 

Furthermore, LEXIS® has the MEGA Library which contains the MEGA file, a one-stop search of all available federal and state case law on the LEXIS® service. In addition to all of DIALOG®'s databases, the following is a sampling of other Intellectual Property litigation sources on WESTLAW®:
 
Database Description
USPQ United States Patent Quarterly: decisions, order or
FIP-PTO Patent & Trademark Office Decisions: administrative decisions released by the USPTO that have been prepared by the Commissioner of Patents and Trademarks, the Board of Patent Appeals and Interferences, or the Trademark Trial and Appeal Board; coverage begins in 1987.(56)
FIP-CS Federal Cases: Intellectual Property cases from the U.S. Supreme Court, courts of appeals, district courts, bankruptcy courts, Court of Federal Claims, Tax Court, military courts, and related federal and territorial courts; coverage begins in 1789.(57)
 

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Overall Search Setting

While validity, infringement, patentability and even state of the art searches require creative search strategies, most patent post-granting action searches are very direct and focused. This search is targeted, usually on a patent number. Farming-out such a search would most likely increase costs by adding a "middleman" and increase time. In-house searches of this type would tend to be the most cost efficient and time effective route to take. Most of the time, a searcher will have the patent number for which the action is desired. With a patent number in hand, it is a "quick-in, quick-out" look. The patent lawyer can rapidly determine the status of any patent right from the desktop in a matter of seconds by accessing any of the above mentioned databases and requesting information on the desired patent. With a little bit of knowledge concerning the contents of each database (as is given herein), the search becomes even faster. If there are a large number of patents for which statuses are desired, a paralegal, clerk or intern, any one of which need only be slightly familiar with search techniques, can efficiently retrieve the desired information as well as, or perhaps even better than, the patent lawyer.

There may be times when the patent number is unknown, but a status for it is still needed. In this case, the search would be more time consuming but still more efficiently performed in-house because it is still targeted on finding a specific patent; it just requires keying the search by a descriptor other than the patent number. Perhaps the inventor or assignee or title is known. If the patent lawyer is familiar with or specifically knows any of these, it would still be a fairly rapid search. Depending on the lawyer's own familiarity with search techniques, it may be better to have a paralegal, clerk or intern perform the search for cost-effectiveness.

Still another type of patent post-granting action search may be slightly broader in scope: a search for patents which, for example, have been or are being reexamined. This is still a targeted search, but is targeted on a status rather than a patent. Because of its targeted nature, it is still best performed in-house. However, this is probably not the type of search a patent lawyer should do because it is more time consuming than the other two (2) mentioned above. Greater search skills may also be needed. While a paralegal, clerk or intern may have those skills (and if they do, they should be utilized), an in-house search specialist, if available, would be able to span the breadth of sources most efficiently.
 

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Conclusion

Patent post-granting actions is a targeted search which is best performed in any number of legal/litigation related databases. While no one database contains the status of all of the post-granting actions, several, such as the CLAIMS REASSIGNMENT & REEXAMINATION, INPADOC and LITALERT (all available on DIALOG®, Orbit and through WESTLAW®) and PATENT LEGAL STATUS (PAST on Orbit) each contain the majority. Any one of these files would be an excellent place to begin, and often end, such a search. The patent lawyer, because of the targeted nature of the search, should be able to efficiently retrieve the status of any patent right from the desktop using any of the tools discussed herein. General information regarding statuses may also be obtained directly from the system by the patent lawyer, but because the search criteria, while still very targeted, is broader than a patent number search, it may take longer and might best be performed by other in-house staff whose hourly rate is lower.
 

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1. Knight-Ridder Information Database Catalog - Spring 1996, p. 48
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2. Knight-Ridder Information Database Catalog - Spring 1996, p. 50
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3. Knight-Ridder Information, Patent Information on DIALOG presentation, FPLC, June 1997, p. 14
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4. Knight-Ridder Information, Patent Information on DIALOG presentation, FPLC, June 1997, p. 26
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5. Knight-Ridder Information Database Catalog - Spring 1996, p. 49
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6. Knight-Ridder Information, Patent Information on DIALOG presentation, FPLC, June 1997, p. 9
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7. Questel-Orbit Database Catalog, p.12
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8. Questel-Orbit Database Catalog, p.22
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9. Questel-Orbit Database Catalog, p.23
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10. Questel-Orbit Database Catalog, p.24
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11. Questel-Orbit Database Catalog, p.27
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12. LEXIS®-NEXIS® Directory of Online Services, p. 197
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13. LEXIS®-NEXIS® Directory of Online Services, p. 196
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14. LEXIS® on-line GUIDE (all;.gu)
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15. LEXIS® on-line GUIDE (assign;.gu)
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16. LEXIS® on-line GUIDE (reexam;.gu)
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17. LEXIS® on-line GUIDE (reiss;.gu)
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18. DIALOG® Bluesheets, CLAIMS/REASSIGNMENT & REEXAMINATION [123]
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19. ORBIT on-line EXPLAIN command results (explain CRXX)
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20. DIALOG® Bluesheets, U.S. PATENTS FULLTEXT [654,653,652,PATFULL]
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21. LEXIS® on-line GUIDE (assign;.gu)
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22. DIALOG® Bluesheets, CLAIMS/REASSIGNMENT & REEXAMINATION [123]
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23. ORBIT on-line EXPLAIN command results (explain CRXX)
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24. DIALOG® Bluesheets, U.S. PATENTS FULLTEXT [654,653,652,PATFULL]
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25. DIALOG® Bluesheets, CLAIMS/REASSIGNMENT & REEXAMINATION [123]
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26. ORBIT on-line EXPLAIN command results (explain CRXX)
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27. DIALOG® Bluesheets, U.S. PATENTS FULLTEXT [654,653,652,PATFULL]
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28. DIALOG® Bluesheets, CLAIMS/REASSIGNMENT & REEXAMINATION [123]
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29. ORBIT on-line EXPLAIN command results (explain CRXX)
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30. DIALOG® Bluesheets, U.S. PATENTS FULLTEXT [654,653,652,PATFULL]
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31. DIALOG® Bluesheets, U.S. PATENTS FULLTEXT [654,653,652,PATFULL]
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32. LEXIS® on-line GUIDE (reiss;.gu)
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33. LEXIS® on-line GUIDE (all;.gu)
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34. DIALOG® Bluesheets, CLAIMS/REASSIGNMENT & REEXAMINATION [123]
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35. ORBIT on-line EXPLAIN command results (explain CRXX)
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36. DIALOG® Bluesheets, U.S. PATENTS FULLTEXT [654,653,652,PATFULL]
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37. LEXIS® on-line GUIDE (reexam;.gu)
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38. LEXIS® on-line GUIDE (reiss;.gu)
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39. LEXIS® on-line GUIDE (all;.gu)
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40. DIALOG® Bluesheets, CLAIMS/REASSIGNMENT & REEXAMINATION [123]
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41. DIALOG® Bluesheets, CLAIMS/REASSIGNMENT & REEXAMINATION [123]
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42. DIALOG® Bluesheets, U.S. PATENTS FULLTEXT [654,653,652,PATFULL]
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43. LEXIS® on-line GUIDE (reexam;.gu)
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44. LEXIS® on-line GUIDE (reiss;.gu)
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45. LEXIS® on-line GUIDE (all;.gu)
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46. DIALOG® Bluesheets, LITALERT [670]
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47. ORBIT on-line EXPLAIN command results (explain LITA)
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48. DIALOG® Bluesheets, INPADOC/FAMILY AND LEGAL STATUS[345]
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49. ORBIT on-line EXPLAIN command results (explain INPD/INPN)
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50. ORBIT on-line EXPLAIN command results (explain INPD/INPN)
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51. ORBIT on-line EXPLAIN command results (explain PAST)
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52. LEXIS®-NEXIS® Directory of Online Services, p. 196
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53. LEXIS®-NEXIS® Directory of Online Services, p. 196
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54. LEXIS®-NEXIS® Directory of Online Services, p. 196
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55. LEXIS®-NEXIS® Directory of Online Services, p. 196
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56. WESTLAW® Intellectual Property Databases Brochure
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57. WESTLAW® Intellectual Property Databases brochure
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