Introduction

Survey Methodology

Summary Tables

Table 1. Summary of Search Tools and Services

Table 2. Summary of Document Delivery Sources

Table 3. Total Law Firm Size Cross Reference Guide

Table 4. Number of Patent Attorneys or Agents Cross Reference Guide

Detailed Survey Results

Sole Practitioners

Sole Practitioner 1 (SP1)

Sole Practitioner 2 (SP2)

Sole Practitioner 3 (SP3)

Sole Practitioner 4 (SP4)

Sole Practitioner 5 (SP5)

Sole Practitioner 6 (SP6)

Sole Practitioner 7 (SP7)

Small Law Firms (2-10 Austin Attorneys)

Small Law Firm 1 (SLF1)

Small Law Firm 2 (SLF2)

Small Law Firm 3 (SLF3)

Small Law Firm 4 (SLF4)

Small Law Firm 5 (SLF5)

Small Law Firm 6 (SLF6)

Small Law Firm 7 (SLF7)

Small Law Firm 8 (SLF8)

Medium Law Firms (11-25 Austin Attorneys)

Medium Law Firm 1 (MLF1)

Medium Law Firm 2 (MLF2)

Medium Law Firm 3 (MLF3)

Medium Law Firm 4 (MLF4)

Medium Law Firm 5 (MLF5)

Large Law Firms (26-50 Austin Attorneys)

Large Law Firm 1 (LLF1)

Large Law Firm 2 (LLF2)

Large Law Firm 3 (LLF3)

Large Law Firm 4 (LLF4)

Conclusion

Appendix 1. Text-Command Searching Software from a Computer Programmer's Perspective

Appendix 2. About the Author

This survey was performed for a graded project in the Patent and Trademark Research Tools and Strategies course offered at Franklin Pierce Law Center during the Intellectual Property Summer Institute of 1997. The survey was completed on July 7, 1997. About eighty-nine percent (17/19 = 89.47%) of the private law firms in Austin are covered by the survey.

The survey contains mostly good advice and information on patent search tools, services, and strategies. However, such information should be taken with a grain of salt because there is probably also some misinformation. The results are basically presented as they were received, but with some organization and grammar added.

This article is loaded with hypertext links to patent and intellectual property database and document providers, which alone makes it worth reading.

The names of the law firms and interviewees remain anonymous for several reasons. First, the author does not want to offend any of the law firms participating in the survey, especially because the author will likely seek employment from those law firms in the near future. Second, the goal of this survey is to provide objective results. Third, the author was not sure how some law firms or attorneys therein would react to seeing their law firm compared on the Internet with the competing law firms. Fourth, the author did not obtain express consent from all of the interviewees to publish their law firm's name within a survey on the Internet. Hence, the law firms are given arbitrary names like variables in an equation.

All comments in the Detailed Survey Results section are those of the persons interviewed by phone for the survey, and do not necessarily represent the opinions, principles, or patent search strategies of Barry Dove nor Franklin Pierce Law Center .

This survey only pertains to sole practitioners and private law firms (more than 2 attorneys) in Austin, Texas. Also, most of the law firms in Austin have other offices in other cities that may or may not use the same search tools and services. The in-house patent attorneys of corporations were not surveyed. The names and phone numbers of the patent attorneys were obtained from the PTO attorney and agent roster and, in alternative, from the West Legal Directory (WLD) on Westlaw . The total law firm sizes and Austin office sizes were obtained from the West Legal Directory (WLD) on Westlaw .

According to the PTO attorney roster, there are currently 149 patent attorneys and agents in Austin, Texas. This survey covers 77 of those 149 people. Of the 72 people not covered, 50 are in-house patent attorneys or agents employed by corporations or by the government. Only 2 out of the 19 private law firms in Austin were not covered because they were not available at the time of the survey, which means that 89.47% of the private law firms are covered. The remaining 20 people not covered in the survey are persons selected from a group consisting of (i) those no longer with the firm and not found on WLD, (ii) retired attorneys, (iii) those which only an answering machine or voice mail could be reached on several tries, and (iv) those with only home phone numbers listed and no WLD listing (agents can not be searched on WLD).

In the Detailed Survey Results section, listings of search tools appear in the same order as the interviewee recited them during the survey. Also, the general order of each comment is in substantially the same order as presented by the interviewee. Furthermore, some of the exact language and phrases presented by the interviewee are substantially maintained.

When the phrase Internet Databases is used, it may include a web site selected from a group consisting of PTO web site , IBM Patent Server , Yahoo , Lycos , Altavista , and Hotbot .

Table 1. Summary of Search Tools and Services

Search Tool or Service	Number of Firms Referencing	Cross Reference
Dialog	10	SP1, SLF1, SLF3, SLF6, SLF8, MLF4, MLF5, LLF1, LLF2, LLF3
Engineering Library	1	SP3
Patent and Trademark Depository Library Program (PTDLP)	1	SP3
PTO web site	8	SP3, SP7, SLF1, SLF2, SLF4, SLF5, SLF7, MLF2
IBM Patent Server	12	SP3, SP6, SLF1, SLF4, SLF6, SLF7, SLF8, MLF1, MLF4, MLF5, LLF2, LLF4
Internet Databases	6	SP5, SLF5, SLF7, MLF1, MLF3, LLF3
Shadow Patent Office	1	MLF1
Corporate Intelligence	5	SP7, SLF4, SLF7, MLF4, LLF4
LEXIS-NEXIS	9	SLF3, SLF6, SLF8, MLF1, MLF2, MLF4, LLF2, LLF3, LLF4
Westlaw	3	MLF1, LLF2, LLF4
Optipat	1	SLF4
Patro	1	SLF6
STN Easy	1	SLF7
Questel-Orbit	1	MLF5
Foreign Associates	3	SLF7, MLF1, MLF5
European Patent Office (EPO)	3	SLF2, SLF6, SLF7
Client Handles Searching	2	SP3, SP5
Search Firms Near the PTO	20	SP1, SP2, SP4, SP5, SP7, SLF1, SLF2, SLF3, SLF4, SLF5, SLF6, SLF7, SLF8, MLF1, MLF2, MLF3, MLF4, MLF5, LLF1, LLF3

Table 2. Summary of Document Delivery Sources

Document Delivery Source	Number of Firms Referencing	Cross Reference
Dialog	4	SLF8, MLF5, LLF1, LLF2
Engineering Index Abstracts	1	SP3
Patent and Trademark Depository Library Program (PTDLP)	1	SP3
Internet Databases	1	MLF1
PTO web site Abstracts	2	SP3, MLF2
IBM Patent Server	4	SP1, SP3, SP6, SLF8
Corporate Intelligence	4	SP7, SLF7, MLF4, LLF4
MicroPatent	7	SLF1, SLF2, SLF3, SLF4, SLF6, SLF7, MLF5
Optipat	2	SLF1, LLF2
PTO	2	SLF4, LLF2
REEDFAX	5	SLF6, MLF2, MLF5, LLF1, LLF2
LEXIS-NEXIS	2	MLF1, MLF2
Westlaw	1	MLF1
Faxpat	3	MLF2, LLF1, LLF3
British Library	1	MLF5
Foreign Associates	1	MLF5
Client Provided	3	SP3, SP5, LLF2
Search Firms Near the PTO	10	SP1, SP2, SP4, SP5, SLF5, MLF2, MLF3, MLF5, LLF1, LLF3

Table 3. Total Law Firm Size Cross Reference Guide

Total Law Firm Size	Cross Reference
1	SP1, SP2, SP3, SP4, SP5, SP6, SP7
2-10	SLF1, SLF4, SLF5, SLF6, SLF7
11-25	SLF2, SLF8
26-50	LLF1
51-100	SLF3
101-250	MLF1, MLF2, MLF3, MLF5
251-500	MLF4, LLF2, LLF3
501+	LLF4

Table 4. Number of Patent Attorneys or Agents Cross Reference Guide

Number of Patent Attorneys or Agents at Austin Office	Cross Reference
1	SP1, SP2, SP3, SP4, SP5, SP6, SP7, SLF8, MLF1, MLF3
2	SLF1, SLF4, SLF5, MLF2, MLF4, LLF4
3	SLF6, SLF7, LLF1
4	LLF2
6	SLF2
7	LLF3
9	SLF3
11	MLF5

Sole Practitioner 1

Patent Searching: Sole Practitioner 1 (SP1) uses a combination of personally searching and farming-out the searches.

Personally Searching: When personally searching for patents and prior art, SP1 uses DIALOG - Knight-Ridder Information Databases to search for both US and foreign patents and technical literature.

Farming-out the Searches: SP1 farms-out the patent searches to any one of 10 various search firms near the PTO in Washington, DC.

Document Delivery: SP1 views and orders patents from the Internet at the IBM Patent Server .

Sole Practitioner 2

Patent Searching: Sole Practitioner 2 (SP2)farms-out the patent searches to a search firm near the PTO in Washington, DC, which performs an "active search" as well as both US and foreign patent and technology searches. However, if SP2 is faced with filing a foreign patent, SP2 refers the case to another attorney.

Document Delivery: SP2 relies on the same search firm near the PTO that performs the search to provide copies of the patents or literature.

Sole Practitioner 3

Patent Searching: Sole Practitioner 3 (SP3) requires the inventor to perform the searches. SP3 points the inventor to the Engineering Library at the University of Texas at Austin (UT) , wherein the inventor searches US patents using CASSIS on CD-ROM within the Patent and Trademark Depository Library Program (PTDLP) . Also, the inventor searches technical literature using the Engineering Index databases on CD-ROM and the UT Library System computerized card catalog. In addition, some of SP3's clients search on the PTO web site and the IBM Patent Server .

SP3 also relies on the inventor to have a substantial knowledge of the prior art before searching. SP3 prefers to rely on the inventor to perform the search rather than a professional search service because the professional search services have missed relevant prior art in the past. Having an attorney perform the search is too expensive for most of SP3's clients. When asked what SP3's clients think of being required to perform the search themselves, SP3 replied, "I don't know, I guess if they don't like it, they just find another attorney."

SP3's clients rarely search foreign patents, which is very dependent on how much money the inventor wants to spend. SP3 feels that most of the relevant prior art will be found in the US patents and technical journals.

SP3 also lets the inventor draft most of the patent application (specifications and drawings) except for the claims. SP3 drafts the claims, revises the rest of application for proper format, and completes the PTO forms. SP3 tries to let the inventor do as much of the work as possible to cut costs for the inventor.

Document Delivery: If the inventor is searching in the UT Engineering Library, then the inventor prints the abstracts from the Engineering Index CD-ROM and photocopies the technical articles available in the library. For US patents the inventor prints the abstracts from the CASSIS CD-ROM and photocopies the full text and drawings of the US patent from the microfiche tapes within the PTDLP . If the inventor is searching on the web, the abstracts are downloaded and printed from the PTO web site during the search, or the full text and drawings of the US patent are downloaded and printed from the IBM Patent Server site.

Sole Practitioner 4

Patent Searching: Sole Practitioner 4 (SP4) is not currently working in the patent area. However, SP4 previously worked at a computer software corporation where they farmed-out the patent searches to small independent search firms near the PTO, which is probably the method SP4 would use again.

Document Delivery: SP4 would rely on the same search firm near the PTO that performs the search to provide copies of the patents or literature.

Sole Practitioner 5

Patent Searching: Sole Practitioner 5 (SP5) is currently exclusively retained to prosecute patents for one corporate client. The corporate client performs all of the searches in-house and provides all of the necessary technical information and prior art. Then, SP5 drafts and prosecutes the patent based on the search results provided.

Occasionally SP5 will personally search by keyword on the Internet Databases just to see what prior art is out there already, to get background information, or to gain a better understanding of the technology at hand.

Previously SP5 preferred to use search firms near the PTO because it is their profession to search and they are good at it. SP5 is concerned that something may be missed if searched personally. Also, SP5 prefers to place the responsibility and liability of the search on the search firm.

Document Delivery: SP5 relies on the corporate client to provide copies of the relevant patents and technical information. If SP5 is using a search firm, then SP5 relies on the same search firm near the PTO that performs the search to provide copies of the patents or literature.

Sole Practitioner 6

Patent Searching: Sole Practitioner 6 just recently started using the IBM Patent Server on the web because it is economical (it's free).

Document Delivery: Sole Practitioner 6 also uses the IBM Patent Server to obtain copies of US patents.

Sole Practitioner 7

Patent Searching: Sole Practitioner 7 (SP7) primarily uses Corporate Intelligence for patent searches. Sometimes SP7 will use a search firm near the PTO in Washington, DC. However, SP7 would rather perform the searches personally because the online research tools are becoming more economical. SP7 tries to get the inventor involved in the search by seeking advice on search terms or keywords, which improves the search results.

SP7 occasionally uses the PTO web site , but rarely because SP7 has an account with Corporate Intelligence which provides unlimited search time for $100/month, wherein each full-text patent viewed and downloaded costs $2.

Document Delivery: SP7 uses Corporate Intelligence for obtaining full-text copies of patents. SP7 could use the fax-back service available, but SP7 prefers to download the patents to a computer hard drive. Although, downloading the patents can be somewhat slow and tie-up a computer (even using a 200 MHz PC and a 56k modem). However, downloading the patents provides an advantage because the text of the patents, which is not copyrighted material, can be copied and pasted directly into the background section of the patent application. Hence less typing and greater accuracy.

Small Law Firm 1

Austin Office Size: 2-10 attorneys
Total Law Firm Size: 2-10 attorneys
Number of Patent Attorneys or Agents at Austin Office: 2

Patent Searching: Small Law Firm 1 (SLF1) uses a variety of patent search tools and services, depending on the client's needs. If a quick novelty or a knock-out search is needed, the SLF1 patent attorney will personally search on the Internet using the PTO web site and the IBM Patent Server . However, the IBM Patent Server is used more because it offers full-text and figures of the US patents.

If the client requires a detailed full-text search, SLF1 will personally search using the DIALOG - Knight-Ridder Information Databases for US patents and technical literature. If the client requires a more in-depth search, SLF1 will farm-out the search to an individual attorney in Washington, DC.

SLF1 does not perform foreign patent nor foreign technical literature searches.

Document Delivery: SLF1 uses MicroPatent and Optipat for obtaining copies of patents.

Small Law Firm 2

Austin Office Size: 2-10 attorneys
Total Law Firm Size: 11-25 attorneys
Number of Patent Attorneys or Agents at Austin Office: 6

Patent Searching: Small Law Firm 2 (SLF2) patent attorneys use a combination of personally searching and farming-out the searches.

Personally Searching: When personally searching, SLF2 attorneys use the PTO web site to search US patents.

Farming-out the Searches: SLF2 farms-out patent searches to search firms near the PTO in Washington, DC. For searching foreign patents and literature, SLF2 uses certain examiners at the European Patent Office (EPO) in Munich.

Document Delivery: SLF2 uses MicroPatent for obtaining copies of patents.

Small Law Firm 3

Austin Office Size: 2-10 attorneys
Total Law Firm Size: 51-100 attorneys
Number of Patent Attorneys or Agents at Austin Office: 9

Patent Searching: Small Law Firm 3 (SLF3) patent attorneys use a combination of personally searching and farming-out the searches depending on three factors: budget of the client, time available for the search, and type of art.

Personally Searching: When personally searching, SLF3 attorneys use LEXIS-NEXIS and the DIALOG - Knight-Ridder Information Databases . Personal searches are used because often what is relevant prior art does not become apparent until it is read or until the figures are viewed. If browsing through patents, it is less expensive to use Lexis than Dialog because Lexis charges by the file whereas Dialog charges by the minute.

For foreign patents and literature searches, SLF3 attorneys use Dialog connected either directly or through Lexis .

In the past, Lexis was used more because it provides full-text searches, figures, and the patent can be printed directly from Lexis . Currently, SLF3 uses Dialog more than Lexis .

Farming-out the Searches: SLF3 farms-out patent searches to search firms near the PTO in Washington, DC.

Document Delivery: SLF3 used MicroPatent almost exclusively last quarter for obtaining copies of patents because the quality is good and each patent costs only $3.

Small Law Firm 4

Austin Office Size: 2-10 attorneys
Total Law Firm Size: 2-10 attorneys
Number of Patent Attorneys or Agents at Austin Office: 2

Patent Searching: Small Law Firm 4 (SLF4) patent attorneys use a variety of services in a two step process. First, the SLF4 attorney performs a preliminary search on the Internet using the PTO web site and the IBM Patent Server to quickly see what prior art is in the area and to better narrow the search requests and keywords.

Second, the search is farmed-out to a small or one person search firm near the PTO in Washington, DC. SLF4 prefers to use small search firms because SLF4 wants to help out the other firms that are small like themselves. In alternative for step two, SLF4 recently started using Corporate Intelligence and Optipat on a trial basis for personally searching. However, SLF4 has found the Corporate Intelligence pricing scheme somewhat confusing.

Document Delivery: SLF4 uses MicroPatent ($3/patent) to obtain copies of patents. Also, SLF4 uses the US PTO fax service for three reasons: reasonably priced ($6/patent), same day service (usually within a few hours), and print quality is good.

Small Law Firm 5

Austin Office Size: 2-10 attorneys
Total Law Firm Size: 2-10 attorneys
Number of Patent Attorneys or Agents at Austin Office: 2

Patent Searching: Small Law Firm 5 (SLF5) farms-out the patent search to an independent search firm near the PTO in Washington, DC. SLF5 prefers that attorneys perform the searches. SLF5 uses the same searchers regularly because SLF5 likes to gain trust in the searchers. Using a small search firm, SLF5 knows who is actually performing the search because many of the large search companies advertised in journals will hire anyone to perform searches. Hence, a patent attorney using a large search company does not know the quality level of the search results.

When requesting a search, the SLF5 patent attorney will provide the structural elements for the searcher to look for in the prior art. The SLF5 attorney wants to know where the searcher looked (class, subclasses) and wants copies of the relevant patents. SLF5 prefers to farm-out the patent search because SLF5 believes that most patent attorneys are not competent searchers and that there is an art to searching.

Occasionally when the SLF5 attorney needs to know some background information regarding an invention, the attorney will scan the Internet Databases or the PTO web site .

Document Delivery: SLF5 relies on the same search firm near the PTO that performs the search to provide copies of the relevant patents or literature.

Small Law Firm 6

Austin Office Size: 2-10 attorneys
Total Law Firm Size: 2-10 attorneys
Number of Patent Attorneys or Agents at Austin Office: 3

Patent Searching: Small Law Firm 6 (SLF6) uses a variety of search services, both personally searching and farming-out the search.

Personally Searching: SLF6 searches on the Internet a lot using the IBM Patent Server , but SLF6 believes it might be an incomplete search. For a heavy-duty search (i.e. litigation preparation), if not farmed-out, the SLF6 patent attorney will search using the DIALOG - Knight-Ridder Information Databases . Also, SLF6 occasionally uses LEXIS-NEXIS for patent information.

Farming-out the Searches: For heavy-duty searches, often the search is farmed-out to a small search firm near the PTO. SLF6 regularly uses the same individuals to perform the search either from a small search firm or a small law firm in Washington, DC. One of the searchers used by SLF6 in the electrical engineering field (a patent attorney in DC) has been regularly contracted for years.

Foreign patent and literature searches are not performed much by SLF6. When the need for foreign searches do arise, SLF6 sometimes personally performs the search using Dialog. However, most foreign searches are farmed-out to the European Patent Office (EPO) search service because their prices are good. In addition, Patro, a Japanese search company, performs the searches for Japanese patents and literature. Foreign searching is not economical for novelty searches when filing a patent application, but it is often used for litigation.

Document Delivery: SLF6 primarily uses REEDFAX for obtaining copies of patents by fax because the service is fast and inexpensive. The print quality with REEDFAX is good and REEDFAX has a high resolution option. Of course, the quality of a fax is only as good as the fax machine's print-quality capability.

SLF6 also uses MicroPatent to download patents through the MicroPatent web site. However, MicroPatent is rarely used because it is too slow to download through the Internet.

Small Law Firm 7

Austin Office Size: 2-10 attorneys
Total Law Firm Size: 2-10 attorneys
Number of Patent Attorneys or Agents at Austin Office: 3

Patent Searching: Small Law Firm 7 (SLF7) uses a variety of search services dependent on the client's budget and the purpose of the search.

For really small clients that can barely afford the patent prosecution, which SLF7 does not get a lot of, SLF7 will ask the inventor if he/she wants to perform the search himself/herself. If the inventor desires to search himself/herself, then SLF7 recommends searching the free search tools available on the Internet: Internet Databases, PTO web site , and IBM Patent Server . If the small inventor does not wish to search himself/herself, or if the invention is unlikely to be marketable and a patent on such invention is unlikely to be of value, then SLF7 will recommend a minimum search by a search firm near the PTO for about $300.

For large clients willing to spend the money on patent prosecution, SLF7 will often farm-out the search to a search firm near the PTO that will pull all of the patents that the Patent Examiner is likely to cite against the invention, which costs about $1,000. Also, the search firms are used to obtain file histories and to search the general area of the technology (state of the art).

When SLF7 performs the search for a large client, the SLF7 patent attorney will search using a variety of search tools: Corporate Intelligence, IBM Patent Server , PTO web site , Internet Databases, and STN Easy .

SLF7 searches the Internet a lot using the IBM Patent Server because most of the electrical technology in new (post 1971). However, the IBM Patent Server is too slow. On the other hand, Internet Databases are good for searching keywords and acronyms in electrical technology. SLF7 uses the PTO web site for assignee or attorney searches to find out what other companies have filed, to find out what the client's company has filed, to find out which other law firms have prosecuted patents for a SLF7 client, and to monitor the competition.

SLF7 also uses the Corporate Intelligence search engine, but it is not a good search tool for field searches because it is only a basic Boolean-keyword search. Yet, Corporate Intelligence is good for searching for pieces of patents when a patent from the PTO has pages missing.

For foreign patents and literature, SLF7 uses STN Easy when searching personally. Also, SLF7 often farms-out a foreign search to the European Patent Office (EPO) or foreign associates (attorneys licensed to practice and located within the foreign country). The EPO is a good source for foreign searching, especially if you file an application under the Patent Cooperative Treaty (PCT). SLF7 recommends not choosing a US searcher for doing the PCT search because they will send it to the same Patent Examiner performing the search for the US patent application at the PTO, which yields no new information. It is also better to designate a searcher at the EPO for the PCT application because the EPO has a better and different database for foreign patents and literature than the PTO .

If the client is involved in litigation for infringement, often SLF7 will perform or farm-out a very in-depth search using the various methods listed above with few cost limitations because there is often large money at stake and the goal is to find any prior art that may invalidate the opponents patent.

If SLF7 is writing an invalidity opinion for licensing, an in-depth search is performed because the attorney needs good prior art to narrow the scope of the claims. For such a search the methods listed above are used, but often not to the extreme level of a search when litigation is involved.

If the client is only trying to build up a stack of patents for cross-licensing that may never be litigated, then often SLF7 will just file the patent without much or any search. The goal in such a scenario is to get the patent filed as soon as possible, keep the case pending, and find the prior art later during the prosecution. Such a strategy is especially amenable to electrical technology that is on the leading edge when the client has a very good knowledge of the prior art, the client is confident the invention has not been done before, or the client has filed so many patents in the area of the invention that it has already accumulated masses of prior art from previous patent prosecutions.

SLF7, based partly on the current trend of the courts and based on the presumption of patent validity applied by the courts, estimates that 80% of patents litigated are found valid, and of those patents found valid, 80% are found to be infringed upon. Hence when filing a patent without an in-depth search, SLF7 relies partly on the excellent odds that an issued patent will be upheld in litigation.

SLF7 speculates that most of the patents filed out of Austin, especially electrical patents, are not searched before filing. SLF7 estimates that only about 1 out of 30 patents filed for one of the large computer chip manufacturers is searched because the manufacturer knows the state of the art very well. Therefore, SLF7 also speculates that most of the law firms in Austin would like to say they are searching, but in reality most are not.

Another reason that SLF7 is opposed to in-depth searches is that an in-depth search may hinder the inventor from obtaining a patent of value (for cross-licensing) because the Patent Examiner will just use the inventor's in-depth search against him/her during patent prosecution. SLF7 argues that if you spend enough money looking, you will likely find prior art that will limit the scope of the patent claims. Furthermore, SLF7 argues that most of the cost for filing patents is to pay for the patent office (US or foreign) to perform a somewhat in-depth search. So, why spend the money twice for the searching?

Document Delivery: SLF7 mostly uses Corporate Intelligence for obtaining copies of patents. Also, MicroPatent is used in alternative.

Small Law Firm 8

Austin Office Size: 2-10 attorneys
Total Law Firm Size: 11-25 attorneys
Number of Patent Attorneys or Agents at Austin Office: 1

Patent Searching: Small Law Firm 8 (SLF8) uses a combination of personally searching and farming-out the searches.

Personally Searching: When personally searching for patents and prior art, SLF8 attorneys primarily use DIALOG - Knight-Ridder Information Databases . SLF8 recently begun using the IBM Patent Server because it is free. In the past, SLF8 used LEXIS-NEXIS , but SLF8 hardly ever uses it for patent searches anymore.

Farming-out the Searches: SLF8 has not performed as many searches lately, but when searches are required regularly, SLF8 farms-out the patent searches to a search firms near the PTO in Washington, DC. Then, after receiving the search results, SLF8 supplements the search by personally searching in Dialog or IBM Patent Server.

Document Delivery: SLF8 downloads the patents or literature from the same source used to search and find the information: DIALOG - Knight-Ridder Information Databases or IBM Patent Server . After the document is downloaded, it is imported into Word Perfect for further viewing, printing, or clipping.

Medium Law Firm 1

Austin Office Size: 11-25 attorneys
Total Law Firm Size: 101-250 attorneys
Number of Patent Attorneys or Agents at Austin Office: 1

Patent Searching: Medium Law Firm 1 (MLF1) uses a combination of personally searching and farming-out the searches depending on: how quickly the search is needed, the topic, cost, and the complexity of the invention.

For novelty searches before filing a patent application, MLF1 will typically use a search firm near the PTO in Washington, DC.

For litigation when an in-depth search is required, a MLF1 patent attorney will personally search for US patents using a variety of search tools: LEXIS-NEXIS , Westlaw , Shadow Patent Office , and IBM Patent Server . Currently, MLF1 is experimenting and trying different sources for searching because of the recent growth of Internet sources available.

For searching foreign patents and literature, which is only done for litigation, MLF1 farms-out the search to an independent search firm near the PTO in Washington, DC and/or foreign associates (attorneys licensed to practice and located within the foreign country).

MLF1 does not get a lot of overflow patent prosecution from the large companies. Instead, MLF1 gets more of a variety of technology. Hence, MLF1 frequently performs patent searches, especially if MLF1 has not dealt with the technology before. However, if MLF1 is familiar with the client's area of technology from previous cases, then a search may not be necessary.

Document Delivery: MLF1 uses a variety of sources for obtaining copies of patents or literature: LEXIS-NEXIS and Westlaw . Currently, MLF1 is also experimenting and trying different sources for document delivery because of the recent growth of Internet Databases available.

If the search is farmed-out to a search firm or foreign associate, then MLF1 relies on the same search firm near the PTO or foreign associates that performs the search to provide copies of the relevant patents or literature.

Medium Law Firm 2

Austin Office Size: 11-25 attorneys
Total Law Firm Size: 101-250 attorneys
Number of Patent Attorneys or Agents at Austin Office: 2

Patent Searching: Medium Law Firm 2 (MLF2) uses a combination of personally searching and farming-out the searches.

Personally Searching: When personally searching for patents and prior art, MLF2 uses LEXIS-NEXIS . Also, one of MLF2's patent attorneys uses the PTO web site in addition to Lexis . The other patent attorneys at MLF2 are not using the PTO web site only because they do not have Internet access in their offices.

Farming-out the Searches: MLF2 also regularly farms-out searches to Haas & Associates, which is a search firm near the PTO in Washington, DC that uses engineers to perform the searches.

Document Delivery: MLF2 uses the PTO web site for downloading patent abstracts during a search on the PTO web site . For the whole patent, MLF2 uses Faxpat and REEDFAX . Also, MLF2 downloads the whole patent from LEXIS-NEXIS during a search on Lexis .

If the search is farmed-out to a search firm, then MLF2 relies on the same search firm near the PTO that performs the search to provide copies of the relevant patents or literature.

Medium Law Firm 3

Austin Office Size: 11-25 attorneys
Total Law Firm Size: 101-250 attorneys
Number of Patent Attorneys or Agents at Austin Office: 1

Patent Searching: Medium Law Firm 3 (MLF3) farms-out most of the searches to a search firm near the PTO in Washington, DC. Also, MLF3 occasionally searches personally using Internet Databases. A lot of MLF3's clients do their own searches to save money.

Document Delivery: MLF3 relies on the same search firm near the PTO that performs the search to provide copies of the patents or literature.

Medium Law Firm 4

Austin Office Size: 11-25 attorneys
Total Law Firm Size: 251-500 attorneys
Number of Patent Attorneys or Agents at Austin Office: 2

Patent Searching: Medium Law Firm 4 (MLF4) uses a combination of in-house searching and farming-out the searches depending on the seriousness of the search required.

Personally Searching: MLF4 uses the IBM Patent Server on the Internet for simple searches. For more in-depth searches, MLF4 uses the DIALOG - Knight-Ridder Information Databases and LEXIS-NEXIS . Occasionally, MLF4 uses Corporate Intelligence for searching.

Farming-out the Searches: MLF4 uses a patent agent in a search firm near the PTO in Washington, DC when the searches are farmed-out.

Document Delivery: MLF4 uses Corporate Intelligence for obtaining copies of patents.

Medium Law Firm 5

Austin Office Size: 11-25 attorneys
Total Law Firm Size: 101-250 attorneys
Number of Patent Attorneys or Agents at Austin Office: 11

Patent Searching: Medium Law Firm 5 (MLF5) uses a variety of search methods depending on the area of technology and whether an in-depth search is required (i.e., litigation).

For electrical technology, MLF5 farms-out all of the patent searches to multiple search firms near the PTO in Washington, DC. Also, the MLF5 electrical group obtains a great deal of information from the client, especially when the clients are large companies.

MLF5 has a very strong biotech patent group that does all of their own searching. The MLF5 biotech patent attorneys do not perform the searches personally, but rather the searches are delegated to scientific advisors. The scientific advisors are not attorneys, but they are PhD's, chemists, microbiologists, geneticists, and other life scientists. MLF5 encourages the scientific advisors to become patent agents. The scientific advisors perform substantially all of the searches in the life science areas, and, if the scientific advisor is a patent agent, they also draft patents. The scientific advisors perform searches using primarily the DIALOG - Knight-Ridder Information Databases . Most of the MLF5 attorneys do not have accounts and access to Dialog. It is not time and cost effective for MLF5 patent attorneys to occasionally use Dialog because it is not user-friendly with its text commands.

Occasionally the MLF5 patent attorneys will search on the Internet using the IBM Patent Server because it is free. However, the IBM Patent Server can actually cost more because it is too slow and the attorney spends too much time waiting.

For foreign patents and literature searches, one of MLF5's large international departments at other MLF5 office locations handles the foreign searching and patent prosecution. The MLF5 international departments utilize a network of foreign associates (attorneys licensed to practice and located within the foreign country) to aid in foreign searching and prosecution.

MLF5 has a librarian who performs many searches: patent family, legal status, assignee search, and claims searching. The MLF5 librarian primarily uses the DIALOG - Knight-Ridder Information Databases . The MLF5 librarian previously used Questel-Orbit , but not much anymore because it can not process large results when commonly occurring terms are used in the search. When the MLF5 librarian is performing an in-depth search for infringement litigation and is trying to find a patent or publication that will invalidate the patent as a defense, the MLF5 librarian will often search for multiple instances of a keyword. Then, MLF5 will print-out as many as 700 patent and article abstracts within a specific date range; looking for the prior art that proves the invention already existed prior to the patent at issue. Such searches are often too large for Questel-Orbit and must be performed on Dialog. The MLF5 librarian still thinks highly of Questel-Orbit , but finds it difficult to switch back-and-forth between Dialog and Questel-Orbit because of the differences in commands and syntax.

Document Delivery: The MLF5 electrical group relies on the same search firm near the PTO that performs the search to provide copies of the patents or literature.

The MLF5 biotech group uses a variety of methods for obtaining copies of patents or literature: DIALOG - Knight-Ridder Information Databases , REEDFAX , and MicroPatent . When using Dialog for document delivery, it is either received by fax, overnight express mail, or regular US mail, depending on the urgency required. Documents from REEDFAX are received by fax. Documents from MicroPatent are downloaded to an office PC and printed on a laser printer.

For document delivery of foreign patents and literature, MLF5 first tries the British Library . In alternative, MLF5 relies on a network of foreign associates (attorneys licensed to practice and located within the foreign country).

Large Law Firm 1

Austin Office Size: 26-50 attorneys
Total Law Firm Size: 26-50 attorneys
Number of Patent Attorneys or Agents at Austin Office: 3

Patent Searching: Each patent attorney surveyed (2 of 3 were surveyed) at Large Law Firm 1 (LLF1) uses a different search methods. The first LLF1 attorney farms-out the searching to a search firm near the PTO in Washington, DC. The second LLF1 attorney performs the searches personally using the DIALOG - Knight-Ridder Information Databases .

Document Delivery: The first LLF1 attorney relies on the same search firm near the PTO that performs the search to provide copies of the patents or literature. In alternative, the first LLF1 attorney uses REEDFAX or Faxpat .

The second LLF1 attorney uses any combination of DIALOG - Knight-Ridder Information Databases , REEDFAX, and Faxpat .

Large Law Firm 2

Austin Office Size: 26-50 attorneys
Total Law Firm Size: 251-500 attorneys
Number of Patent Attorneys or Agents at Austin Office: 4

Patent Searching: Large Law Firm 2 (LLF2) patent attorneys searched personally in the past, but now most all patent searching is delegated to the librarian and the paralegal for the intellectual property section. One of the LLF2 attorneys estimated that only one search was performed personally within the last year.

Both the librarian and the paralegal use the same variety of search tools and methods: DIALOG - Knight-Ridder Information Databases , IBM Patent Server , LEXIS-NEXIS , and Westlaw .

Most of LLF2's clients provide a search report to be used for filing and prosecuting the patents. However when a relevant foreign patent is cited in the search report, LLF2 must submit a translated abstract and the drawings from the foreign patent. Hence, most of the work delegated to the librarian and paralegal is to obtain copies and translations of patents or literature that is in a foreign language. Usually, the librarian and paralegal are not actually doing prior art searches.

When the librarian and paralegal search, they use Dialog the most, especially for foreign art, because Dialog has the most information from one source. The IBM Patent Server is used a lot for US patent searches. Lexis or Westlaw is used if a search has a lot of hits that must be reviewed or if they need to take time to browse through the hits because Lexis and Westlaw charge by the file whereas Dialog charges by the minute.

Document Delivery: When LLF2's librarian and paralegal need to obtain a US patent for which they have the US patent number, they use a variety of services depending on the urgency of delivery: Optipat , REEDFAX , or the PTO . The PTO is used when time is not of the essence, but sometimes the PTO is the only source to obtain the patent.

For foreign patents and articles, DIALOG - Knight-Ridder Information Databases are used to obtain as much as possible.

One of LLF2's clients of gave LLF2 a CD-ROM with all of that company's issued patents on it because the company has so many patents.

Large Law Firm 3

Austin Office Size: 26-50 attorneys
Total Law Firm Size: 251-500 attorneys
Number of Patent Attorneys or Agents at Austin Office: 7

Patent Searching: Large Law Firm 3 (LLF3) farms-out almost all of the patent searches to a search firm near the PTO for several reasons: they have reasonably prices, they are thorough, and, when in a rush, they can perform the search really fast if you pay more. Each LLF3 patent attorney uses certain searchers that each has built a relationship with from prior searches.

On the rare occasion that a LLF3 patent attorney performs a search personally, a variety of search tools are used: Internet Databases, LEXIS-NEXIS , and DIALOG - Knight-Ridder Information Databases .

Document Delivery: LLF3 relies on the same search firm near the PTO that performs the search to provide copies of the patents or literature. Otherwise, LLF3 uses Faxpat .

Large Law Firm 4

Austin Office Size: 26-50 attorneys
Total Law Firm Size: 501+ attorneys
Number of Patent Attorneys or Agents at Austin Office: 2

Patent Searching: Large Law Firm 4 (LLF4) patent attorneys do not personally perform the patent searches. Instead the searches are delegated to technical specialists within LLF4 who perform the searches. The technical specialists are people with engineering backgrounds that either are patent agents or are working towards becoming a patent agent or attorney.

The technical specialists perform patent searches using a variety of search tools: LEXIS-NEXIS , Westlaw , IBM Patent Server , and Corporate Intelligence.

Document Delivery: LLF4 uses Corporate Intelligence for obtaining copies of patents.

A large number of the patent attorneys surveyed do not perform the search themselves. The primary reason seems to be that it is not cost effective in most cases for the attorney to spend the time searching. One in-depth or international patent search can easily consume a full day's workload. Also, thorough patent searching is an art, but mainly because most of the databases are not user-friendly. Furthermore, the database providers typically charge large sums of money per minute of use, which leads to the need for a skilled person who can quickly and efficiently navigate the databases. Therefore, many searches are farmed-out to professional searchers (most who do nothing but patent searching), which makes the patent searches on the expensive, yet high-quality, databases affordable. For more details and statistics, please refer back to the Summary Tables section.

Appendix 1. Text-Command Searching Software from a Computer Programmer's Perspective

Dialog says that it does not foresee that Dialog will ever eliminate its text-command searching software. I personally think that Dialog's belief that a point and click software tool for searching will not be as powerful as the text command searching is a myth for several reasons. I think Dialog wants to maintain the job security for those people that regularly use Dialog enough to become comfortable with its syntax (those that have the "keys to the Cadillac"). After two years of converting text-command software to user-friendly point and click software (e.g., LabView) for complex data acquisition and motion control systems, I know that with a group of good computer programmers almost any text-command software can be made more user-friendly. Furthermore, the ever-increasing speed and power of computer processors and telecommunication networks is making the RAM-hogging user-friendly software more feasible. When software is user-friendly and without the need for the user to memorize obscure commands, the use of the software is more enjoyable and much more time efficient for infrequent users.

To further debunk Dialog's philosophy that they will probably never let go of the text-command searching method, Thomson & Thomson (T&T) , the power-house of trademark and copyright searching, has just released Saegis. Saegis is T&T's new user-friendly point and click software for trademark searching to compete with Dialog. T&T believes that its new point and click software will provide more power and features than text-command searching software, which is contrary to Dialog's belief. So, the future will show what searchers and users prefer as Saegis becomes mature. I personally predict that Saegis will take a lot of trademark search business from Dialog.

As an example of how educated people react to the difference between user-friendly and text-command software, I will briefly describe a true incident that occurred in January 1997. At the beginning of the spring semester, all of the first year law students (1L's) were trained to use Westlaw and Lexis-Nexis. First, everyone was trained on Westlaw using Westmate for Windows, version 6.10, which is Westlaw's new (1996) user-friendly point and click search software. There were no complaints. Everyone seemed comfortable using Westmate and they immediately began using it for legal research.

The following week, the same 1L's were scheduled for Lexis-Nexis training. The training session was in SMU Law School's new large auditorium-style classroom with a big-screen (about 15' X 20') computer-overhead projection system and a surround-sound audio system, which was filled with about 120 1L's. Hence, there were no problems seeing or hearing the on-screen presentation of how to use Lexis-Nexis. After learning and using Westlaw's user-friendly software, the 1L's were completely disinterested in learning the archaic text-command Lexis search methods. Literally flocks of 1L's began pouring out of the auditorium after the first 10 minutes of the presentation. Most of the 1L's were gone from the auditorium 30 minutes into the presentation. By the end of the presentation, there were only about 10-15 1L's remaining.

Subsequently, I heard a great number of 1L's saying how ridiculous and difficult the Lexis searching software appeared as compared to Westmate. Also, the 1L's could see no reason why they should bother learning to use Lexis when Westlaw's software provided the same results without the confusion. Throughout that Spring semester, most of the 1L's used Westlaw exclusively, and the Westlaw laser printer was regularly backlogged with an hour wait while the Lexis laser print sat idle. Therefore in this case, the user-friendly point and click search software definitely won out over the text-command search software.

In my opinion, Westlaw's Westmate (version 6.10) search software is the best searching software I have seen so far, compared to Lexis, Dialog, Questel-Orbit, and most Internet Databases. My favorite feature in Westmate is the LOCATE tool under the BROWSE menu. When a document is on-screen, the user inputs a word or words into the LOCATE prompt. Then, the software highlights the word or words asked to be located. Also, the user can jump from one occurrence of the word to another instantly by clicking the TERM arrows. The LOCATE tool is especially useful when looking for particular parts of a long case because the user can jump to the relevant section without weeding through the entire document. I further like the fact that I can sit down and use Westmate comfortably, after not using it for several months, without looking in a reference guide or asking for help, which is how all software should operate.

Please don't get me wrong, I think Dialog and Lexis are very powerful and useful databases, and I still use them. I just wish they would hire some good computer programmers to create a more user-friendly searching software. If they don't, the competition will probably overcome them in the near future.

Appendix 2. About the Author

This survey and article, as well as this snazzy web page, were created by Barry Dove.

Barry Dove is a full-time law student at Southern Methodist University School of Law (SMU) in Dallas, Texas. He attended Franklin Pierce Law Center (ranked #1 in IP law) for the Intellectual Property Summer Institute of 1997 in order to take IP courses not available at SMU and to prepare for the PTO Patent Bar Exam on August 27, 1997.

Barry is the President of the Intellectual Property Organization at SMU for 1997-98, and he is currently within the top 1/3 of his law school class (class of 1999).

Barry has a BS in Mechanical Engineering with honors from the University of Texas at Austin. Also, he worked for two years as a Mechanical Engineer primarily creating computer software for motion-control and data-acquisition of remote-robotic transducer and sensing units.

For more information, Barry will gladly mail, fax, or e-mail his resume to perspective employers upon request.