Preliminary Patent Research on the USPTO Web Site for New Product

Development: The Basics

Suzanne L. Holcombe, MILSGovernment Information SpecialistOSU, 501 Edmon Low Library(405) 744-7086, lib-ped@okstate.eduwww.library.okstate.edu/patents/

Why are we talking about Intellectual Property?(patents, trademarks, copyrights, trade secrets)

When you have an invention or new research:

Check patent literature: To see if a product has already been

developed For ideas to improve existing research For new areas of research

IP: Patents

Patents reveal solutions to technical problems, and they represent an inexhaustible source of information:

More than 80 percent of all technical

knowledge is described in patent literature

Preliminary Patent Research

Do a preliminary check of U.S. patents and to see if your invention already exists in the U.S. via the U.S. Patent and Trademark Office Web site: http://www.uspto.gov/

Even if you don’t decide to take the route of a patent, you still need to determine if your invention is patented by someone else before you can produce and market it.

Preliminary v. Professional

A search done on the USPTO Web site for U.S. patents or trademarks is a PRELIMINARY search (does not include other countries, etc.) (And searching can be difficult and time

consuming..) Before applying for a patent or trademark,

contact a patent attorney to have a professional search done.

The Patent and Trademark Library at OSU

Part of the USPTO’s Patent and Trademark Depository Library Program: a nationwide network of 84 libraries set up to disseminate patent and trademark information and support the intellectual property needs of the public.

We are located on the 5th floor of the OSU Library and we have a Web site.

Call to make an appointment for assistance with a preliminary U.S. patent or trademark search.

Intellectual Property

Property that can be protected under federal law. Patents Trademarks Copyrights

Intellectual Property (IP)

In Section 8 of Article 1 of the U.S. Constitution:

“Congress shall have Power To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors exclusive Right to their respective Writings and Discoveries”

Four main forms of IP: Patents, Trademarks, Copyrights, Trade Secrets

Actual forms of property which can be bought, sold, etc.

What is a Patent? (U.S..)

Provision in Title 35 of the United States Code (U.S. Law)

Must be a new and useful machine, item of manufacture or composition

Must be non-obvious, and reproducible by one skilled in the art

Patent grants the right to exclude others from making, using, or selling an invention for a period of time, but it is publicly disclosed

Three types of patents: utility, design, and plant

What cannot be patented?

An idea: inventions must be reducible to practice

Laws of nature/naturally occurring articles Scientific principles Business practices

Utility Patents What we think of as a “patent” Protect how the item WORKS Legal language defines the actual

parameters of the protection Length of protection is 20 years from

date of file, provided maintenance fees are paid

Applications are published 18 months after filing (American Inventors Protection Act AIPA)

Potential Utility Patents:

Chemical compositions: toothpaste

Articles of manufacture: tennis ball

Machines: drill

Processes: “Data storage array method and system”

Stephen McKeever, OSU Physics Dept.

Assigned to the OSU Board of Regents

A bimodal method for determining an unknown absorbed dose of radiation. An irradiated material is illuminated with ultraviolet or visible light and the luminescence which is emitted from the material is detected. The illuminating light is pulsed, with pulse widths varying from 1 ns to 500 ms. The luminescence emission from dosimetric traps is monitored after a delay following the end of the illumination pulse.

Current U.S. Class: 250/459.1; 250/484.5

Method for Determining an Unknown Absorbed Dose of

Radiation…

Design & Plant Patents

Design patents protect how the item LOOKS Less expensive to obtain, protect for

14 years

Plant patents protect a variety of plant such as roses, begonias, etc.

Patents Worldwide

Most industrialized countries offer inventors protection in the form of a patent. Standards vary from country to country.

If an invention has been patented in one country, it cannot be patented in another: it has already been patented in the “world.”

There are international treaties that allow U.S. inventors to obtain patent protection in other countries if they take certain required steps (See WIPO, http://www.wipo.org/).

Search Worldwide Patents: Espacenet via European Patent Office

Do you need a patent?

Patents: Are a bureaucratic, complicated

venture Are expensive: average cost $8,000-

$15,000 and up (U.S.) Need assistance from a patent

attorney to be successful Take a while to issue: from the date

of filing, 1.5 to 2 years

Do you need a patent?

Depending on the nature of the invention, it maybe be more desirable to start producing and selling the product without a patent.

Patent searches are still necessary however.

Or file a Provisional Patent. Consult with an attorney, Small Business

Adminstration branch office, weigh the pros and cons.

Trademarks and Copyright

Check Trademarks to see if a name or logo for a good or service is in use in the U.S.

Copyright will give protection to creative expression in the form of literary works, performing arts, sound recordings, visual arts, software

What is a Federally Registered Trademark?

Provision in Title 15 of the United States Code Word, name, symbol or device that identifies the

good/services of one entity from goods/services of another in interstate commerce

Owners of marks may seek federal registration because of procedural and legal advantages over state and common law trademark protection

Protection is indefinite, if fees are paid See http://www.uspto.gov/ ® symbol is a registered mark. “Tm” and “Sm” indicate an

unregistered Good and Service.

Copyright

Provision in Title 17 of the United States Code Protection for creative expression, not the facts Automatic protection is given to printed works,

software, artwork, photo, video, software and practically everything on the Internet, once “fixed in any tangible medium of expression” but register for more protection ($30 fee)

Duration of protection runs the life of the author, plus 70 years

See the U.S. Copyright Office at the Library of Congress http://www.copyright.gov/

The Patent Process: U.S.

See the USPTO website http://www.uspto.gov/ for basic information about patents and the patent process: How to apply for a patent Fees and payments (see Patent Assistance Center).

(The basic filing fee for a utility patent is $300, $150 if a small entity, plus fees for additional claims, etc.)

Search patents (also patent applications – those that have been accepted)

File and check status (attorneys) See also Nolo Press’s title: Patent It Yourself, available at the

Library or via http://www.nolo.com/

Searching Patents on the Internet

If you’re looking for a single representative patent (something that is close to your idea), then keyword searching available on the USPTO (U.S.) or Espacenet (World) Web sites may suffice

BUTIf you want to be able to say “nothing else like mine

exists,” then you must perform a U.S. classification based search

The USPTO uses a class/subclass system to organize patents into like groups (as to how they work) NOTE: It is only very recently that all of this can be done online. For years we used paper and microfilm.

Searching U.S. Patents on the USPTO Site

The complete images of all patents (back to 1790) are available online ONLY if searching by class/subclass.

Searching by keyword will ONLY retrieve patents back to 1976 (also inventor, assignee, etc.)

Site is updated daily

The full-text of a patent will include “drawings” or “pictures.”

USPTO requires that the AlternaTiff plug-in be installed to see drawings (TIFF format) http://www.alternatiff.com/

Steps to Starting Patent Search

1. Start at http://www.uspto.gov/go/classification/ 2. Use the US Patent Classification A-Z Index online or

in paper and locate your subject and initial class/subclass. 3. Examine Class Numbers and Titles (Manual of

Classification in paper..) and Definitions online or in paper to further define the class/subclasses to search.

4. Look at patents online assigned to selected class/subclasses. * * * * * * * * * * * * * * * * * * * * * * * * * * * * * *

Or do a Keyword search. Study relevant patents to determine appropriate

class/subclasses.

Patents: Search at http://www.uspto.gov/

Keyword Applications

Class/Subclass

1

2

To Do a Good Preliminary Search

It is important to determine the appropriate class(es)/subclass(es) for your invention and to examine all of the patents in that class(es)/subclass(es).

It is very helpful to locate an already existing patent that is similar to your idea using either the Index or a Keyword Search.

On the first page of every patent are the classes/subclasses assigned to that patent according to how it WORKS. You can use these to guide you in your search.

USPTO Class/Subclass System

Divisions of patented technology

For more help see HELP at http://www.uspto.gov/go/classification/

There are 450+ Classes

Every one of these (subclasses) is a LIST of patents.

Each list may have as few as 40 or as many as 500+ patents in it.

All the patents on 43/9.4 meet the criteria of Fishing, Nets, Trawl, Bottom running sled.

USPTO class/subclass system, example

http://www.uspto.gov/go/classification/ (where 043 is replaced by the class you’re investigating)

Search Example Using the Index

Bird feeders Process: 1. Go to the US Patent Classification site http://www.uspto.gov/go/classification/2. Use the US Patent Classification A-Z Index to

locate your subject 3. Examine Class Numbers and Definitions to further

determine the class/subclasses to search http://www.uspto.gov/go/classification/

4. Look at patents online assigned to selected class/subclasses

Scan to see if there are entries of interest

Click on the class or the subclass number to go to the Class or the Subclass.

Click on “B” in the Index (A-Z list) and scroll down to ‘Bird.’ See FEEDERS and HOUSES

Check Class D30 Animal Husbandry:, Subclass 124 to see if this is relevant, or scan to identify other, more specific subclasses.

Click on the red P’s to see the patents in any of the subclasses. You can view patents back to 1790.

Click on the subclass numbers for definitions or more information about the subclass.

Check Class 119 Animal Husbandry:.. , Subclass 52.3 to see if this is relevant, or scan to identify other, more specific subclasses.

Click on the red P’s to see the patents in any of the subclasses. You can view patents back to 1790.

Click on the subclass numbers for definitions or more information about the subclass.

By clicking on the red P, this is a listing of the 121 patents in Class 119 Subclass 52.3

This is page one of patent no. 6,986,322: Squirrel Proof Bird Feeder

Use Current U.S. Class noted in a patent and go back and do a thorough class/subclass search:

119/52.3

119/57.9

Search Example Using a Keyword Search

Or start with a Keyword search Use USPTO full-text Advanced Search

http://patft.uspto.gov/netahtml/search-adv.htm

Describe your research as clearly as possible

Use “$” to find other forms of a word Study relevant patents to determine

appropriate class/subclass Searches 1976 to present only

Samples, Keyword Searching

Friction testing devices: friction and testing (20,000 patents) “friction test” abst/friction and abst/test$ (265

patents) abst/”friction test” (8 patents)

At: http://patft.uspto.gov/netahtml/search-adv.htm

Search “bird feeder” and squirrel

Scan down through the list of patents until you find one that looks close to your project. Remember that this search will only retrieve patents back to 1976.

This is page one of patent no. 6,986,322: Squirrel Proof Bird Feeder

Squirrel Teasing Hanger

Patent No. 6,951,188

Search Published Applications

Once Classes/Subclasses for your research have been determined, search Published Applications

Conclusion In general ... Patents protect

the invention and how it works. Patents are available on the

Internet, but are not as easy to search as it appears.

Thorough patent searching requires that an appropriate class/subclass be found and patents in that class/subclass be examined.