Book Reviews

Patent Searching: Tools & Techniques. Edited by David Hunt, Long Nguyen and Matthew Rodgers. New York: Wiley & Sons, 2007. 188 p. $70 USD. ISBN 978-0-471-78379-4. Patent Searching: Tools & Techniques, edited by David Hunt, Long Nyugen and Matthew Rodgers, is an introduction to patent searching and analysis written for new patent information professionals. Mr. Hunt is the CEO and owner of Landon IP, an Alexandria, Virginia-based firm specializing in patent and trademark searching, patent analytics and business research. Messrs. Nguyen and Rodgers are senior employees at Landon and former patent examiners with the USPTO. Most of the book was written by Landon employees, many of whom are also former patent examiners, and staff members from the Patent Resources Group, a training company offering courses in patent law and practice. The book is divided into six chapters. Chapter 1 discusses patent searching in the context of patent law and examination practice. Chapter 2 is an overview of the principal types of patent searches: patentability, validity, infringement, clearance, state-of-the-art and landscape. The purpose and scope of each type of search is discussed. Chapter 3, the longest (71 pages) chapter in the book, discusses the mechanics of conducting a patent search using patent classification codes, keywords and cited references. Chapters 4 and 5 give advice on how to analyze and report search results. Chapter 6 reviews various free and commercial patent search tools. The book provides useful advice on how to conceptualize a patent search and how to search interdisciplinary technologies such as biotechnology and business methods. Curiously, although it gives a good overview of the U.S. Patent Classification System, it fails to mention class definitions. The chapters on analyzing, organizing and presenting search results are especially useful. However, it also has some major weaknesses. It omits and glosses over much information that would be helpful to a new patent searcher. For example it gives only a cursory explanation of the different types of patent documents and their characteristics. It does not discuss INID codes or any of the other standards that are crucial to understanding patent documents. And although the authors state that "it is imperative to all types of searches... that a foreign patent search should be completed," there is little discussion of foreign patents and patent families. The overview of specific search tools at the end of the book does not include many useful free resources such as the WIPO's PatentScope PCT application database, FreePatentsOnline and Patent Lens. Jester, Michael H. 20 Questions to Ask If You Have a Great Idea or Invention. Franklin Lakes, NJ: Career Press, 2006. 157 p. $10.99 USD. ISBN 978-1564148650. Few books written for the independent inventor are as helpful and insightful as Michael Jester's 20 Questions to Ask If You Have a Great Idea or Invention. Page for page, it is packed with more practical advice than many books twice its length. Jester is a registered patent attorney (Reg. #28022) based in Coronado, California with more than thirty years experience representing both large companies and individual inventors. During his lengthy career he has prepared several hundred patent applications, of which more than 120 have issued as patents. The book is organized into twenty short chapters that address the most important questions that inventors and entrepreneurs should consider before embarking on a new business venture. Topics include, among other things, patents, trademarks, trade secrets, copyrights, searching the prior art, working with a patent attorney, licensing a product, obtaining foreign patent protection and defending a patent. Jester gives his advice in a direct and down-to-earth tone that will appeal to inventors with little or no prior experience. He uses numerous examples of patents to illustrate different points about intellectual property and the patent system. Throughout the book, Jester attempts to dispel common myths and naive ideas about patents that persist in the independent inventor community. For example, he is especially critical of the general paranoia and deep suspicion of patent attorneys that is common among inventors. He also warns inventors of the dangers of working with invention promotion companies, the fly-by-night firms that promise instant wealth, but offer worthless services at ridiculously high fees. It is worth remembering that despite the myth of the solo inventor working in isolation in a garage or basement, virtually all would-be Edisons have family, friends and business associates who may be willing or unwilling partners in their quest. This book will help them better understand the risks and rewards of commercializing a new product. The work has some minor errors and omissions. For example, in the chapter on working with patent attorneys, Jester fails to mention the U.S. Patent and Trademark Office's Roster of Patent Attorneys and Agents, which is an up-to-date directory of registered patent professionals in good standing. Jester's book is an excellent introduction to patenting and marketing an invention. However, it is not a primer on writing a patent application or conducting a patentability search. Nor does it offer detailed advice on licensing an invention or drafting a business plan. Inventors looking for step-by-step instructions should consult more in-depth books such as Patent It Yourself by David Pressman (12th ed., Nolo, 2006) and Patent Searching Made Easy by David Hitchcock (4th ed,, 2007). While 20 Questions... should not be the only book an aspiring inventor reads, it definitely should be the first.

Michael White,
Librarian for Research Services,
Queen's University,
Kingston, Ontario, Canada.