Home > Topics > Freedom to Operate and Risk Management > How and Where to Search for IP Information on the World Wide Web: The “Tricks of the Trade” and an Annotated Listing of Web Resources > Editor's Summary, Implications and Best Practices

Intellectual Property searches, in particular patent searches, are becoming an increasingly familiar requirement in technology transfer offices worldwide. These searches are already well established in commercial organizations. Fortunately, free tools to access comprehensive patent databases and other resources are now only fingertips away from anyone. The basic requirements include internet connectivity, capability and training. This general availability of information is good news for developed countries and public sector research organizations. As IP practices are harmonized through evolving international agreements such as TRIPS, IP management becomes more important for everyone. While some argue that IP rules detrimentally affect developing nations, especially when it comes to access to crucial health-related technologies, the global IP system is a reciprocal system, one that opens up opportunities on both sides of the developed/developing line.

Already, Innovative Developing Countries (or IDCs), including India, Korea, China, Brazil, South Africa, and others, are embracing the novel opportunities provided by the new global IP regime. Having established Technology Transfer Offices (TTOs) for organizations in both the public and private sectors, these countries have overseen the controlled, streamlined transfer of crucial technologies, often with clear public benefits. Such efforts, of course, require investments in both infrastructure and personnel, and one important task is to develop skills and resources to query worldwide IP databases effectively. These databases of patents and other forms of intellectual property can provide information of great value to public health and food security related projects.

For both novices and experienced searchers, IP search tools are increasingly accessible via the worldwide web (Internet) at national patent offices, through independent search engines, and at IP information repositories. Personnel in individual research organizations can now search background IP-protected innovations that may impact their own research programs and commercialization objectives. This chapter describes some of the benefits of investing in resources to probe public and/or proprietary databases, and it emphasizes how to begin exploring Internet search resources.

The chapter provides a guided tour for a wide variety of information, including:

• the usefulness of patent searches for evaluating potential inventions
• how to assess freedom to operate (FTO) in R&D and commercialization phases
• how to mine current technical information buried in recent patent literature that is otherwise unavailable in conventional sources of information
• the importance of FTO and landscape analysis for protecting one’s inventions—as well as for preemptively controlling the dissemination of a technology for the public good.
• Patent searching strategies are also considered in general terms, since there are no fixed rules for patent searching.

The recommended free databases are the European Patent Office (EPO), U.S. Patent and Trademark Office (USPTO) and Patent Cooperation Treaty (PCT) web interfaces. EPO has full patent downloads from a variety of countries. Commercial databases are particularly recommended because of their flexibility, geographical coverage, superior indexing, ease of use and value added features; however, cost is an important factor in determining if, when and how these will be used. Among these, Delphion and Derwent World Patent Index (DWPI) are especially recommended. To analyze agricultural or plant biotechnology patents, CAMBIA is recommended when used in combination with other databases. Most usefully, CAMBIA has pre-analyzed patent landscapes for key technologies but its database is incomplete at this stage. This can save a lot of time, effort, and money.

Using the EPO esp@cenet as an example, the chapter offers practical illustrations for searching databases. Step-by-step instructions are given for searching this database, accessing legal information, and downloading whole patent documents (including screenshots). Although different databases have their own interfaces and idiosyncrasies (such as input formats), the principles of searching the esp@cenet apply widely to other databases, including commercial ones.

The chapter also lists downloadable IP handbooks about biotechnological inventions, patent information sites (such as the “Managing IP” site), and a few patent “blog” sites that may contain useful information. Regular visits to these sites in combination will often reveal useful information and keep you up-to-date with new developments.

A downloadable draft policy document from the Indian Council for Agricultural Research (ICAR) may also be useful as a starting point for thinking about local IP institutional policy and how to patent for the public good. Key sites that deal with global IP-related issues and treaties are provided by the WTO and WIPO.

Although by no means exhaustive, the sites listed will themselves contain links to other useful sites. As with the Internet in general, available IP resources will rapidly multiply, though some will inevitably disappear due to lack of maintenance or resources. Because intellectual property is a dynamically evolving multi-disciplinary area, keeping up-to-date with trends and developments requires some imagination and dedication. Indeed, the listed sites are just the launch of a long and fascinating journey into this subject matter.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Access to high speed internet services and patent databases is critical for research-based institutions to undertake meaningful patent and information searches. Because they keep people up-to-date with the technological frontier, such searches form the basis for effective IP management and innovation. High-speed internet access should therefore be a part of overall policy reviews.

For Senior Management (university president, R&D manager, etc)

• Adequate resources should be made available for in-depth patent searches, including staff training, recruitment of talented individuals, and access to patent databases and high speed internet.
• Institutional-wide policies that promote and implement training of computer and internet skills and capabilities should be incorporated.

For Scientists

• Take advantage of free patent search sites and regularly monitor new patents published or issued in your field.
• Be aware of both patent and scientific search engines available on the internet. Knowledge of how to access, use and mine these tools for valuable information will serve you and your program well. Hence, encourage your staff to become facile in internet database search skills.

For Technology Transfer Officers

• Evaluate the pros and cons of free vs. subscription-based patent search sites. Quite often, free services are limited in content and scope and do not allow for the myriad of search capabilities of paid services. But many free sites, such as WIPOs patent scope, are increasingly adding extremely valuable features.
• Effective patent database searching requires cross-platform capacity (both scientific and patent databases) coupled with interdisciplinary skill sets (business, legal and scientific).
• Those conducting patent searches have to be given the necessary time to learn and understand the science related to their searches. This requires people with an interest in the underlying science. Often, small teams composed of patent agents and scientists can be very effective.