(NOTE:  At the end of this post is a detailed spreadsheet that lists the free and low cost tools that I use regularly in my IP strategy practice.  I thought that readers of this blog would also appreciate learning about how these tools can add high value at a low to minimal cost.)

no name brandIn private conversations, some of my corporate peers inform me that they pay $1000′s per year (or even per quarter for larger companies) for access to “name brand” patent search tools that nonetheless  do not contain accurate and up to date information.  For example, a client tells me that one of these expensive tools fails to update USPTO records on a portfolio her company is monitoring and that the PAIR data is more than 1 year out of date.  This limits the effectiveness of the expensive database by requiring her IP support staff to check each individual record on a regular basis to update the data.  Of course, this limitation defeats the purpose of spending the big bucks to engage with a “name brand” search tool.

Certainly, one need not have sympathy for corporate IP professionals who manage large department budgets–if they spend needlessly on “name brand” tools and staff to manage the quality of such tools, so be it.  But most companies with IP strategy needs do not have money and staff to purchase such tools, let alone to fix the errors in the datasets obtained from them.  Others might wish not to waste their department budgets on worthless tools.  To this end, over the last 5 years, I have used a number of free and low cost tools in my IP strategy practice.  I use all of these tools on a regular basis and have personally validated the quality and validity of each one for my practice.

Notably, this list was generated from actual landscaping and portfolio management projects performed by me for both large and small corporate clients.  I have used other tools in the past that did not meet my high standards of quality, ease of use and data integrity–if a tool is not on this list and I have previously recommended it elsewhere on this blog, you should assume that I have experienced some degree of problem with the product and no longer use it or it has disappeared from the list of free or low cost tools.

With regard to patent data solution providers specifically, there are a number of tools that re-code/re-index data from the various global patent offices.  I have found that the datasets obtained from these tools can be suspect because it first goes through a filter before it is rendered searchable in the proprietary database.  One of these databases required me to re-do a large landscaping project totally from scratch when at the end I found that my searches did not identify all relevant documents because the data coders responsible for populating the database did not properly index the underlying patent data.   Re-doing 60 or so hours of landscaping work due to an error-ridden patent search tool was a bummer, to say the least.  I am now very wary of the claims of  those promoting patent search tools.

In this regard, readers should also be aware that the sales teams of many proprietary databases purport to add value by such re-coding the underlying patent data to eliminate the need to conduct the somewhat arcane Boolean search strategies.  However, in my experience, this leads to the classic “garbage in/garbage out” scenario.  For this reason, I strongly prefer databases that allow me to conduct Boolean searches.  Those seeking to generate accurate search results should appreciate that the global patent office databases are populated with data that is meant to be searched using Boolean methodology.  In my experience, the most accurate patent searches result from searching the way the data is indexed.  The USPTO Boolean search tool is cumbersome and one cannot export data.  Instead, I use Sumobrain.com.  This tool is free (so far) and allows me to save portfolios and export data for analysis.

This is not to say that alternative search tools cannot add value:  readers will see Google Patents in the below spreadsheet as one of my go-to tools.  I find value in Google Patents for a different reason than patent landscaping, however.  This tool allows me to use the Google search algorithm to generate patent documents that do not necessarily come up in Boolean searches.  The alternative search results identified by Google Patents frequently allows me to find adjacent technologies where the patents use alternative language to describe similar subject matter.  Since Google Patents does not allow one to export information, I use Petapator, a Chrome extension, to capture the data for later use.

The other tools indicated in the spreadsheet are directed toward monitoring and analyzing patent portfolios.  Maxval-IP and Patent Buddy take traditionally labor intensive jobs and automate them.  For example, instead of taking a paralegal hours to create and format a claim chart, I can obtain a fully complete one in less than a minute with Max-Val’s free tool.  Patent Buddy allows me to create a patent dataset quickly and efficiently–although I note that my I use this tool for high level analysis only for the reasons discussed above.  Max-Val also provides some low cost, paralegal-driven tools that are much less expensive than “name brand” products.  Their PAIR and PACER monitoring products cost a fraction of what I have seen charged by data providers and law firms.

The downside to these free or low cost tools is that one doesn’t have a 1-800-HELP-ME call center.  Since the tools are of such high quality which, combined with my expertise, allows me to work independently of outside assistance.  Others may find these tools more difficult to use and, therefore, may find comfort in having a help desk at the ready.  However, I note that in my experience using “brand name” legal databases in my career, the people manning such help desks typically did not have the depth of expertise to address the usually arcane issues I was seeking to be addressed.  Put simply, if one is looking for someone to help them formulate a patent search strategy or interpret patent data, then they arguably shouldn’t be using (and paying for) these tools in the first place.  Instead, you should be hiring someone to do this for you.  I can recommend someone for you.

Of course, your mileage may vary, and I invite readers to let me know if your use of any of these tools does not comport with my experience.  Also, please feel free to let me know if you use tools that are not on the list.  If it makes sense for my IP strategy practice, I will test the tool out and report back in a subsequent post.

RECOMMENDED FREE/LOW COST PATENT SEARCH AND LANDSCAPING  TOOLS

USED BY IP STRATEGIST, JACKIE HUTTER

Company Name/Contact Info

Product

Why this tool adds value to my

IP Strategy Practice

MaxVal IP-Free Patent Tools

http://www.maxval.com/patent-tools.html

Patent Term EstimatorThe term of a patent is 20 years from the earliest claimed priority date (or longer of 17 years from the issue date or 20 years from the earliest claimed priority date if the patent application was filed on or before June 8, 1995). 35 USC § 154.Patent Family TreeThe Patent Family Tree Generator (PFTG) is used to generate patent family trees for given patents. Given a patent #, application # or publication #, PFTG will generate a graphical tree representation of the family based on Genealogy and Timeline.USPTO WidgetTired of searching multiple USPTO databases using strict formatting to get the information you need? This online tool searches various USPTO databases to display bibliographic details, publication full text, patent full text, assignment details, and maintenance fees in one easy to use interface.IDS GeneratorHow many hours of your life have you spent on generating EFS-ready information disclosure statements? All that is about to change. IDS Generator is a web-based tool that helps you fill out an IDS form quickly, accurately, and efficiently. Simply enter patent or publication number(s) or copy and paste from a document (Word or Excel) and this amazing tool will generate a USPTO-approved EFS-ready document for you.Claim Chart Generator

This online tool automatically creates a claim chart template for the requested patent number. The claim chart can be generated in different formats like Word, Excel or HTML. The tool can generate charts either for all claims or for independent claims only (check the box provided).

Claim Set Comparison Tool

Ever wondered how the claims changed between the published application and the issued patent? Frustrated with figuring out the difference between the U.S. claims and the foreign counterpart claims? This handy tool compares two sets of claims and highlights the difference between them. The comparison chart can be displayed in a new browser window or downloaded as a Word or Excel file.

Reference Annotator

The Reference Annotator tool is intended to provide a user with the ability to mark-up a document by searching for keywords and highlighting the results of each keyword search in a different color.

Patent Maintenance Fee

This online tool automatically calculates the USPTO patent maintenance fee due for a given patent.

Reference Picker

Reference Picker 3.0 is a downloadable software tool that enables you to easily extract the US references, foreign references and other references from any patent specification (.rtf, .doc). The extracted references are displayed in MS Excel Format with links to the respective pages and are also concurrently highlighted in the given patent document

IFW File Splitter

IFW File splitter 1.0 is a downloadable software tool that enables you to easily extract the bookmarks from the File History PDF file into individual PDF files. Bulk IFW File Splitter option helps to split more than one File History PDF file in one click. This tool also helps to merge more than one PDF files in a folder into a single file.

Foreign Filing Fee Calculator

This simple tool – Foreign Filing Fee Estimator – is a valuable resource for Practitioners filing in multiple countries that produces cost estimates for the various countries that an applicant is interested filing an application in. Given the PCT publication number as the input or a few basic fields such as Entity, Pages, claims, etc., and selecting the countries from the list (multiple countries can be selected), the tool automatically generates all the estimates with a detailed breakdown like search, examination, filing fees, etc. Please note that this is a tool in BETA version and hence just a few countries are added now. Will continue to include more countries based on your feedback. Feel free to use the tool and let us know your feedback/comments/suggestions.

Has This Patent Been Litigated?

This free tool checks our Litigation Databank to verify if the patent has been involved in any litigation (US District courts, CAFC, ITC and Supreme Court cases).

Patent PDF Extractor (OCR)

Tired of downloading one PDF at a time? This patent PDF Extractor will download PDFs in bulk and send you the link once completed. Optionally you can have the PDFs OCRed at $2.99/patent.

 

All of these tools are associated with labor intensive activities that are typically conducted by paralegals in a corporate or law firm setting.  While correct operation of these efforts requires significant training, once someone is properly trained, these tasks become rote.  Significantly, there is a baseline amount of time that is always required to undertaken these tasks.  It is possible to use these automated tools to greatly reduce the amount of personnel time needed.  Further, automation of these often tedious tasks reduces the possibility of human error.

MaxVal IP Paid Tools Bala Krishnan Director, Products and BD

Bala@maxvalip.com

Ph:   650-472-1523 X 216

Fax:  650-625-0294

www.maxvalgroup.com

PAIR AlertsIs an email-based public PAIR alert assistant that assists legal operations and responsible attorney(s) track PAIR/EPO patent prosecution status and IFW updates for patent applications of interest (your own or competition)Litigation AlertsYou can now 1) proactively monitor and query whether patents of interest have been litigated; and 2) gain analytical insights on plaintiffs, defendants, filing trends, courts, etc.

Neither PAIR and PACER lend themselves to automation of searches and results.  These fairly low cost services use off-shore paralegals to proactively monitor PAIR and PACER to provide customized reports.Spoke with Bala Krishnan and find him to be a credible representative of an off-shore paralegal team.Based upon discussions with clients who purchase PAIR and PACER monitoring from US corporate searching firms, cost is a fraction of those services for regular monitoring and timeliness is far superior.

Sumobrain.com Free patent searching.  Can search by field search or Boolean.  (If searching for US applications, you must also check the box.)  Can save up to 50 portfolios with registration.  Allows simultaneous searching of US patents/applications, WIPO, EPO and Japanese abstracts.  Creates exportable csv file to prepare comprehensive landscape reports.  Quick searching directly from official government databases.

Most comprehensive source of exportable patent data available at free or no cost.  I have compared this with other paid services and it is hands-down my favorite searching resource.  This is my go to search database.  Ability to pull directly from government databases without separate indexing by “middleman” provides better integrity of search results.

Google Patents

Free patent searching.  Uses Google search algorithms.

Useful as a back up to Boolean searches run on Sumobrain.com.  “Find prior art” tool can be a good way to identify search terms to be used in standard Boolean search.  Currently no way to export searches for further analysis.

PatentBuddy.com

Free patent analytics that rival those of expensive database providers.  Updated assignment information that could be better (e.g., at least more current) than that of paid databases.

Founded by and for patent attorneys, so they “get” how patent experts seek to extract information from patents.  The product seeks to normalize (e.g., “clean” and “integrity check”) existing data using proprietary algorithms.  Co-founder, Leon Steinberg, informed me that their internal checks have demonstrated the accuracy of their assignment data vs. other services.

Petapator.com/

Google Chrome extension that “increases patent efficiency.”1. Read searched patent abstracts, claims, drawings and bibliographies from USPTO and esp@cenet on one single page.
2. With USPTO patent drawings directly. No need to install TIFF viewer.
3. Instant translation of patent abstract.
4. Patent classification analyzer.
5. Direct access to esp@cenet and Google Patent Search.
6. Download PDF of a patent through pat2pdf.org.
7. Download multiple patents in one single PDF file or in separate PDF files.
8. Store your search records.

Streamlines quick review of a large amount of prior art.  Especially useful for “grazing” searches associated with invention scoping and development of search criteria.

 

 


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