A Quick PAS Primer –

Patents play an important role in protecting products that are out in the marketplace, or are soon to be introduced. Keeping a watchful eye on the patent landscape can be an important task in a variety of business functions, including developing new technology, manufacturing a product line, considering new market opportunities, or performing due diligence for a potential startup or acquisition.

Doing a “one and done” patent search can get you up to speed on the patent landscape in any technology field. If your technology of interest is “Ox Shoe Making¹,” then a one and done search will get you caught up today, and you’ll probably be current for quite a while.  On the other hand, if your interest is a little more cutting edge, say OLED displays, you need to be scanning the horizon constantly.  In the “hottest” technologies, the landscape likely changes far more frequently, as every week the USPTO, WIPO^2,3, and the patent offices of foreign countries publish new patent applications and issue new patents.

To stay as current as possible, a weekly update of your search is needed. But in today’s world of constant interruptions and competing priorities, diligently keeping up with any scheduled task takes discipline.  Sooner or later, higher priorities intervene, and the tedious task of slogging through your patent search every week (possibly at multiple websites) to get the latest results will most likely fall to the wayside.

The good news is that many of the companies in the patent information business provide “patent alert” services, informing subscribers of newly issued patents and published patent applications on demand. Some of these companies offer an entry level of service free of charge, and also provide a “premium” fee-based subscription with a higher level of service.

Our PAS Customer Requirements –

As promised in our earlier column⁴ on patent alert services, we recently set out to “test drive” several of the free services, to see how easy they were to set up, and to receive and interpret results.  Having no prior experience with patent alerts, we began by defining a few customer requirements. For selecting a PAS, first and foremost, a candidate had to be easy to find.  It’s the age of instant answers, so we’re not wading through ten pages of a Google search to consider every possibility.  If a candidate didn’t make page one or two, it was out.  Then, once found, first impressions mattered.  The candidate’s website had to be professional-looking and up-to date.  (One PAS site with a copyright notice of 2007 was an easy call.)

For the PAS sites that made the cut, the remaining requirements were pretty straightforward:

• A user friendly interface. It had to be easy to open an account, understand the alert options offered, make choices and set up the alerts.
• Ease of receipt of results. The results had to be delivered via a common medium, preferably e-mail. (No, we did not want alerts pinging our smartphones with an ! inside a red triangle.)
• Confidence in the results. Each candidate had to pass a test, in which a “dummy” search was done to identify patents or published applications that should show up in results. Then the dummy alert search string was run to verify that they were included in the results.
• Call us skeptics, but computer based things seem to have a way of working for a while, and then going south for no apparent reason. We ran our tests for eight weeks, so we hopefully at least found any infant mortality issues.

The PAS Candidates –

As a result of our initial screening, we identified four PAS candidates for our trial. (Surprisingly, in spite of Google’s extensive patent data and document access capabilities, we did not find that Google offered an alert service.  Some archival web postings suggest that Google offered a PAS at some point in the past, but if it still does – ironically – we couldn’t find it.)  The services that we tested⁵ were the following:

• Espacenet, the patent searching site⁶ of the European Patent Office. Includes patents and published applications from the USPTO, WIPO, and JPO, as well as the EPO.  Results delivered via RSS feed.
• Patent Application Alert Service, a joint website⁷ by the USPTO and Reed Technology and Information Services Inc. Limited solely to weekly alerts of newly published US patent applications. Results delivered via e-mail.
• SumoBrain, a comprehensive patent searching site⁸ that accesses major patent databases (USPTO, WIPO, EPO, JPO) and compiles the data per customer-defined search criteria. Capable of providing ongoing alerts for a large portion of issued patents and published applications worldwide.  Parent company appears to be Patents Online LLC.  Results delivered via e-mail.
• Free Patents Online, a patent searching site⁹ similar to Sumobrain, with the same capabilities, and also owned by Patents Online LLC. Results delivered via e-mail.

Our Test Case and Objective –

Regarding a test case, one of us is a co-inventor and has an interest in a wind energy-related technology and patent application. The basic premise of the invention is the extraction of energy from the velocity variations that naturally occur in wind.  A pending patent application¹⁰ is currently undergoing prosecution, and as a result of that prosecution and the inventors’ search efforts, relevant prior art is quite well known.  What is needed is ongoing surveillance of the patent landscape looking forward.  We want to track on an ongoing basis both published applications and issued patents from the beginning of this year forward, on a weekly basis.

We test drive a few patent alert services to learn how to use them, and find out which of them work well.

In particular, we want to know a) if any patents or applications have been published that disclose inventions and technology similar to ours; and b) for the “major players” in wind energy, is there any indication that any of them may be moving into or toward this technology space. Results for criterion a) are relevant to competition in the field in general, and results for criterion b) may be suggestive of licensing, acquisition or joint venture opportunities.

We thought it was best to address these two criteria separately, i.e., to set up separate alerts for each of them. Since criterion a) is the broader of the two, it is best addressed by a keyword search.  Criterion b) is addressed by a simple Assignee and/or Applicant search, which lists the names of the various wind energy companies in the search fields or strings.  The manner of setting up the searches varies with the provider.  FPO and Sumobrain use Boolean search strings;  PAAS uses field text and check boxes; and Espacenet uses field text boxes and a drop-down menu for databases to be searched.  (Step-by-step instructions for each are beyond the scope of this column, and also not necessary.  Each service was fairly straightforward to set up.)

Our Results –

After eight weeks of use, we have a good sense of how each service performs, and for which type of alerts. A brief summary of our results is as follows:

• Espacenet: We ended up dropping the keyword patent alert, and only doing the Assignee/Applicant alert, for two reasons. Firstly, Espacenet only searches the Title and Abstract fields of a patent or published application. Secondly, these fields are each limited to ten terms, and we had considerably more than ten keywords to input.  Both of these constraints limit the scope and effectiveness of a keyword search.  With regard to the Assignee alert, we had more than ten companies to enter, so we had to split the list and set up two separate alerts.  Once the alerts were set up to be delivered as RSS feeds, each week the feeds came in to MS Outlook – IF there were any hits that week.  Otherwise, there was no communication.
• Patent Application Alert Service: This service is very basic. Each week, a PAAS e-mail arrived, which contained one paragraph with hyperlinks to published patent applications that were keyword hits, and one paragraph with hyperlinks to applications that were Assignee hits. Each respective hyperlink opened a USPTO html text file for the particular published application.  Upon review, it was a simple decision as to whether to discard it, or download the full pdf of the published application for further review.
• Free Patents Online: This service demonstrated broad capabilities, and the delivery of results was quite effective. Each week, an e-mail arrived for the Assignee alert, as well as an e-mail for the keywords alert.  The e-mails contained hyperlinks to the respective FPO web pages for each patent or published application, as well as a single hyperlink that opened a master web page that listed all of the hits for that week, and hyperlinks to access them.  There is one additional feature that is particularly useful for the keyword search alert: the results are ranked in descending order of relevance with a scale.  Thus a hit that contains all of the keywords might be ranked 1000, and one with only a few might be around 300.  It quickly became apparent that hits ranked less than 600 could be ignored.  This saved considerable time, given that a typical weekly keyword alert produced about 60 hits.
• SumoBrain: Being from the same company as FPO, the search results arrived in the same manner, and with much the same appearance and format. The only delivery difference that we saw was that the keyword search e-mail only listed the top ten hits by relevance, and we had to access the link in the e-mail to see the rest.  At that point, there was a problem: the link gave an error message, and the only way to get to the alert was to log in separately to our account, and enter through the MyAlerts link.  We don’t know if it was our PC/OS/browser, or the SumoBrain site, but after experiencing that for several weeks, we dropped the SumoBrain alerts.

Tips and Recommendations –

In closing, we can offer a few recommendations if you want to set up a free patent alert service:

• For an Assignee alert, enter the company names AND a couple of basic keywords. (For our case, “wind energy.”) Otherwise, when you have “General Electric” as an Assignee, you will get hits for all of their patents/published apps, not just the wind energy ones.
• For keyword searches, begin by casing a wide net. Use a lot of keywords, wild cards, and ORs (if Booleans are used). It is better to have initial results with a lot of chaff than to miss something important.  You can always narrow the search criteria if you are getting too many irrelevant hits.
• If you are looking to only track U.S. published patent applications, the Patent Application Alert Service is simple and effective.
• For a more comprehensive alert service, we like Free Patents Online. It accesses the big patent office databases, and is easy to set up and receive the alerts. Most importantly, with its relevance ranking algorithm, it really doesn’t take much time to go through your alerts each week.

Happy searching, and if you decide to set up an alert for your own use, we hope it tips you off to a good business opportunity, or helps you avoid a bad one.

1. USPTO Class/Subclass 59/70.
2. WIPO – the World Intellectual Property Organization, administrator of the Patent Cooperation Treaty.
3. The Limited Monopoly®, November 2007.
4. The Limited Monopoly®, August 2015.
5. The authors have no financial interest or business relationship with any of the parties offering these services.
6. http://worldwide.espacenet.com/?locale=en_EP.
7. www.uspatentappalerts.com.
8. www.sumobrain.com.
9. www.freepatentsonline.com.
10. Published as US 2015/0285223.

PHOTO CREDIT: “Railroad at Sunset,” © Can Stock Photo Inc./Daniel Padavona.

Authors Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) and John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) are both registered patent agents and licensed professional engineers.  Copyright 2016 Robert Gunderman, Jr. and John Hammond.

Note: This short article is intended only to provide cursory background information, and is not intended to be legal advice.  No client relationship with the authors is in any way established by this article.

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