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How to locate patent and trademark files

How to locate patent and trademark files

Q: Is it ever too late to sue for infringement of an old patent that has not expired?

A: The law generally favors prompt resolution of disputes and elimination of "old" disputes. Deciding when to sue is complex and usually involves a statute of limitations and/or the equitable doctrines of laches and estoppel. So, without an acceptable excuse, it is better to sue earlier than later.

Q: Can a technical employee move unhindered from one employer to another in the same capacity?

A: Usually, the answer is no, because the first employer has a non-compete and/or a non-disclosure agreement with the employee. Also, the employee has a fiduciary (trust) obligation to the first employer which exists to preserve the first employer's confidence. But, under some circumstances, which can only be determined on a fact-by-fact basis, moves within the same capacity have been acceptable.

Q: What limitations exist in a search for technical or related information?

A: The primary limitation in a search for technical or related information in the United States is difficulty uncovering current information due to the two- to three-year secrecy period in the United States Patent and Trademark Office (USPTO). Moreover, organizational problems may exist in the USPTO for pre-1952 data. Non-United States searches may also present difficulties on a country-by-country basis due to organization and data limits. But United States or non-United States current information (e.g., last five or ten years) is generally available.

How to locate patent and trademark files

Gerald Geren
Gerald Geren Ltd.
Chicago

If your goal is evaluation of a particular technological development, then patent and trademark files, as well as technical publications, are valuable resources.

One purpose of the United States patent law is public disclosure of a technological development in exchange for limited, but exclusive rights for the originator.

So, you can access information regarding technology patented in the U.S., if you know one of the following: the subject matter or clarification, who the inventor is, who the assignee is, or the date of the application.

Time delays. However, a U.S. patent is usually not printed or published until three years from the date the inventor or the assignee files for it. From the filing date to the actual date of publication, the existence of a patent application and its contents remain secret within the U.S. Patent and Trademark Office. During those three years, U.S. patent files are limited to the respective filers.

Non-U.S. patent laws, however, usually permit public inspection of a patent application 18 months from its filing or convention/priority date.

So, a patent application filed in the U.S. on January 1, 1993, would become available for public review in the U.S. sometime near January 1, 1996. That same application, if filed in a foreign country, would become open to the public 18 months from January 1, 1993, or on July 1, 1994. And, you can surmise the probable content of a U.S. patent application with a reasonable degree of accuracy from a foreign file.

Of course, if an inventor does not file for a patent in the U.S. or elsewhere, it is impossible to ascertain information about his/her technological achievements in a patent file.

Often, technical papers, publications, and speeches intimate an entity's direction, including a potential patent filing. However, entities will not print or publish information regarding sophisticated technology until they have applied for a patent, usually to avoid early disclosure or loss of patent rights.

Revealing searches. Investigating U.S. and non-U.S. patent applications tells you what is important to an entity and the likely direction of their R&D, when they plan to introduce their product, and their marketing strategies. The information may not be up-to-date, but it would be more current than information from another source.

And, this information could become valuable when combined with marketplace data, product announcements, grapevine chatter, and more.

So, if you need or want information regarding an entity's development, try searching U.S. and foreign patent files and publications. Still, the results may not be current, and since the approach will uncover only what is available, they may be incomplete.

U.S. trademark files contain information regarding corporate direction, and they are not confidential. And, the originators can file updated applications based on a new plan or an intent-to-use. Foreign trademark files are also a resource to gain information regarding corporate direction, but they are not as helpful as those in the U.S.

Competent investigation of patent and trademark records is a valuable source of information to help you make professional decisions.

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