Introduction to Intellectual Propertyand Patent Searching

John Meier

Patent and Trademark Resource Center Librarian

Pennsylvania State University

http://psu.libguides.com/patents

Penn State University Libraries are a Patent and Trademark

Resource Center (PTRC)

We can teach you to perform patent and trademark searches and provide information on applying to the US Patent and Trademark Office (USPTO).

We are not patent attorneys. We cannot provide legal advice, and we will not do legal research for you.

Four types of intellectual property

• Patents

– Exclude others from making, using or selling their invention

• Copyright

– Author’s original creative work

• Trademark

– A logo or name for a product is protected in a particular industry and geographic region

• Trade secret

– idea or invention protected by secrecy

Multiple Types of Patents

• Utility patents

- functional or structural novelty

Examples: Light bulb or the “comb-over”

• Design patents

- ornamental designs

Example: An athletic shoe sole design

• Plant patents

- varieties of plants

Example: Poinsettia plant named “Eckaddis”

Duration of protection

• Copyright = Life of the author + 70 years

• Utility patents = 20 years from filing date

• Design patents = 14 years from issue date

• Trademarks = Renewed as long as product in the market

• Trade secrets = as long as it remains secret

Criteria for Copyright

• Copyright

– Does not require registration, copyright is automatically secured upon creation

– Registration provides some advantages

– must be original

– cannot consist solely of facts

“write a paper or a book, develop a computer program, send an e-mail, or take a photograph, you automatically own copyright to that work” - American Chemical Society

Criteria for Trademarks

• Trademarks

– can be a word, phrase, symbol or design

– must already be used in interstate commerce (with some exceptions)

Trade Secrets

• Trade Secrets are not generally known and must be subject to reasonable efforts to preserve confidentiality

– Customer lists, product formula, search algorithms

• How do you lose a trade secret?

– Insufficient security, owner reveals the secret, reverse engineering, independent discovery

Criteria for patentability

• Utility

- must be useful, or have a use

• Novelty

- must be new, no “prior art”

Non-obvious

- the difference between existing art and

the invention must be sufficiently great

as to warrant a patent

Novelty and Priority

0 month, Smith invents

+6 months, Smith publishes

+3 months, Smith files patent application (9 months)

Novelty and Priority

0 month, Smith invents

+6 months, Smith publishes

+3 months, Smith files patent application (9 months)

Smiths application prevails because her publication is within the one-year grace period

Novelty and Priority

0 month, Green invents

+1 month, Smith invents

+6 months, Smith publishes

+3 months, Green files patent application (10 months after invention)

Novelty and Priority

0 month, Green invents

+1 month, Smith invents

+6 months, Smith publishes

+3 months, Green files patent application (10 months after invention)

Green`s application fails because Smith`s paper is prior art

Novelty and Priority

Boucher, P. (2012) Recent developments in US patent law.

Physics Today http://dx.doi.org/10.1063/PT.3.1397

Non-obvious or inventive step

1. identifying the closest prior art

2. in the view of the closest prior art, determine the technical problem which the invention addresses and successfully solves

3. examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

How long to get a US patent?

• Application filed to first response by USPTO

16 months (on average)

• Total time to final decision on a patent

25 months (on average)http://www.uspto.gov/dashboards/patents/main.dashxml

Times vary by area of technology

Accelerated examination is available for a fee

21

How much does it cost to get a patent?Large Entity Fees

- Starting at around $2000

- Maintenance for 20 years $9000

Small Entity Fees

- Starting at $1000 for a patent

- Maintenance for 20 years $4500

Micro Entity (no more than 4 apps)

- Starting as low as $500 for a patent

Subject to change frequently, only includes fees due to the USPTO

How much does it REALLY cost to get a patent?

• Provisional Patent Application $1600-3500

• Conversion of Provisional to U.S. Patent Application$5000-$10,000 in Attorney fees, $900 USPTO fee,possible $2500-$5000 PCT fee = $8400-$15,000

• First Office Action $2500-5000

• Second Office Action $2500-5000

• Drawing, Issue Fees and Publication $2000-4000

• Maintenance Fee – 3.5 years $490

• Maintenance Fee - 7.5 years $1240

• Maintenance Fee – 11 years $2055

Average cost around $20,000 with attorney fees but highly variable

Free resources to help you

• Philadelphia Patent Pro Bono Programhttp://www.artsandbusinessphila.org/pvla/patentprobono.asp

• Penn State Law IP Clinichttps://pennstatelaw.psu.edu/practice-skills/clinics/intellectual-property-clinic/ip-clinic-client-application

• Penn State Small Business Development Centerhttp://sbdc.psu.edu/

Benefits of getting a patent

• They give the inventor the opportunity to produce and market the invention himself, or license others to do so, and to make a profit.

• A license agreement allows the patent owner to grant rights to a commercial entity that wishes to practice the patent in return for payment.

On August 24, 2012 a U.S. federal jury found that Samsung mobile devices infringed six of Apple’s patents and awarded $1.05 billion in damages.

Parts of a Patent

The “Front Page”

• Patent Number

• Filing Date and Issue Date

• Title of the Invention

• Inventor(s)

• Assignee(s)

• CPC and Field of Search are Classifications

• References Cited

• Representative Drawing

Assignee

Penn State Office of Technology Management (OTM)

https://www.research.psu.edu/otm

Claims

The importance of Prior Art

Prior art is important for both novelty and non-obviousness

• Previous patents

• Scholarly articles and trade journals

• Books

• Catalogs

• Websites

Patent Searching strategies

Keyword Searching

Parking App

• Patent Number Searching

– Ex: 7294753

• Search by a known field: inventor or assignee

– Ex: “Jobs, Steven” or “Apple Inc”

Patent search strategies

Classification Searching

G08G 1/0112

SECTION G = physics

CLASS G08 = signaling instruments

SUBCLASS G08G = traffic control systems

GROUP G08G 1/00 = for road vehicles

SUBGROUP 1/0112 = “Floating car data sources for measuring and analyzing traffic movement…”

• Cooperative Patent Classification Searching

https://worldwide.espacenet.com/classification

You can search or browse for classifications

Search Tools

• U.S. PTO Website – Free database of U.S. patents –limited searching

http://patft.uspto.gov

• Google Patents – Full text searching of all patents along with PDF files for downloading

http://www.google.com/patents

• esp@cenet – European patent office website that provides a search engine of worldwide patents

http://worldwide.espacenet.com/

Finding Trademarks

• Why search trademarks?

– Discover if a word or mark is already registered

• Search Tools http://tess2.uspto.gov

– TESS and TEAS – free databases from the U.S. trademark office for trademarks and applications

– You can do a visual or a text based search

• Design Codes are used for image searching

• Use wildcards “*” and “$” to find spelling variations

Resources available at the PTRC

• Librarian: John Meier meier@psu.edu

814-867-1448

• Publications of the USPTO

– Handouts and help sheets

• Books on patents, trademarks and inventing and how to search for IP information

– Patent Pending in 24 Hours

– Trademark : legal care for your business & product name

• Tutorials and research guide