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CAS Pursues Patent Searching Market with Science IP
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Posted On August 18, 2003
For 2 decades, Chemical Abstracts Service (CAS; http://www.cas.org) has had an in-house custom search service available to do intermediated searches, primarily sophisticated structure and substructure searching of chemical files. Now, CAS has renamed and re-targeted its custom search service to focus on patents, both within and outside the chemical field. The revised service, called Science IP (http://www.scienceip.org), is targeted at the intellectual property community-patent searchers, attorneys, and research and development professionals.

Besides relying on the array of databases produced by CAS and those hosted by STN International, CAS executives said that-if needed-the service would tap outside databases available on competitive services. One expert patent searcher suggested that the reorienting of the service may represent an effort by CAS to position itself competitively for when the U.S. Patent and Trademark Office begins outsourcing prior art searches, as proposed in The 21st Century Strategic Plan (http://www.uspto.gov/web/offices/com/strat21/index.htm).

The Science IP service will serve the sci-tech research needs of clients looking for prior art and patentability for the prosecution of new patents, freedom-to-practice-and-operate for new and existing technologies, and patent validity for infringement litigation. A four-person research team, including one part-time Ph.D. chemist, will provide the expert searching. The service will continue to draw on the Technical Advisory Team's 25 subject experts for assistance with the chemical searching they have always offered, e.g., experts in Markush chemical structures, nucleic and amino acid sequences, polymers, molecular biology and genetics, material sciences, medical devices, and pharmaceuticals.

According to Michael W. Dennis, director of planning and development: "The desirability of a new on-demand search service that draws upon the expertise of CAS scientists was apparent, considering the growth in new patent applications and the demand for additional resources to supply the needs of the R&D and patenting communities. This is especially true in regard to discovering relevant prior art."

According to Dennis, there are areas the new service will not cover, in particular, legal advice or legal research and in-depth business research. If they receive such requests, Dennis said, "We would probably refer the clients to other organizations or tell the customer that is simply information we do not provide."

Science IP is priced on a time and materials basis at $250 an hour plus online database charges. Document delivery charges run around $12.95 per article plus copyright royalties.

Vendor-operated intermediated search services-sometimes called "house brokers"-face a number of challenges that professional searchers working for users, whether corporate librarians or information brokers, may not. Concerns rise about whether the vendor's staff will search the best databases or simply their own. For example, in the petroleum area, the Encompass and Tulsa files have tremendous strength, but though available on STN only direct subscriptions with the database producers opens access to them.. Even with the general databases that CAS/STN host, sometimes database producers offer superior search tools only to major subscribers, e.g., Derwent's subscriber coding and IFI's Comprehensive Indexing.

Dennis told us that the service is "not just CA-centric. We will search other files. Otherwise Science IP would lose credibility." CAS is also exploring options for adding new databases. As to the special indexing, Dennis said that "we don't have access currently, though perhaps if a company had access, we could use the indexing as their agent."

Professional patent searchers-institutional or information brokers-could view Science IP as a competitive threat. Dennis tried to reassure them: "We are not trying to compete with information brokers or in-house searchers. We are here to help solve problems. In fact, we want to help handle their overflow, not put them out of business."

As Science IP's workload grows, Dennis expects to be: "looking for good high quality professional searchers very soon. We will look at contract relationships with good searchers out there today. Some have already approached us, but we want to confirm the quality before we put the Science IP brand on their results."

To protect itself against liability issues, CAS has a written agreement clients must sign with a provision that limits liability to the price of the work. Dennis did not seem worried. He said: "We are very careful not to offer opinions, no legal opinions, just the strategies we used and the files we searched. And we can't really warrant the primary literature."

CAS, a division of the American Chemical Society, produces Chemical Abstracts (CA), related publications, and CD-ROM services; operates the CAS Chemical Registry; produces a family of online databases; and operates STN International, a network of scientific and technical databases, in association with FIZ Karlsruhe in Germany and the Japan Science and Technology Corp.

Edlyn Simmons, a top patent searcher, identifies STN as "the system of choice" for patent searching these days. She said that CAS has made a policy for the last 10 years of asking customers what they want and need, and then implementing changes.

Another expert patent searcher questioned whether the move represented a repositioning to take advantage of the U.S. Patent and Trademark Office's plans to outsource the prior art searches they do to verify the necessary originality before granting a patent. Brigid Quinn of the PTO said that the first step in outsourcing searches requires congressional approval of changes in the PTO's fee schedules. So far, the approval has only gotten as far as the House Judiciary Committee. When and if it does get approval, the PTO will try a series of pilot projects to test out the concept.

Dennis would not confirm or deny CAS' interest in the PTO situation, although he did comment: "Let me just say, that is not a silly question. We are watching developments at PTO closely. However, that's not the only reason for Science IP. We would be doing this business anyway."


Barbara Quint was senior editor of Online Searcher, co-editor of The Information Advisor’s Guide to Internet Research, and a columnist for Information Today.


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