New Product Development: Preliminary Patent Research on the

USPTO Website

Suzanne L. Reinman ,MILSGovernment Information SpecialistOklahoma State University501 Edmon Low Library(405) 744-6546, suzanne.reinman@okstate.eduwww.library.okstate.edu/patents/

You have a new product, technology, service (or an idea for

one)

aka New Venture Creation

What are your first steps?

Starting a Business

Startup: SEARCH to see if your invention or product already exists and potentially protect your ideas (intellectual

property)

Planning (business plan) Financing Marketing Employees Taxes Legal aspects

Intellectual Property

Property that can be protected under federal law and bought or sold Patents Trademarks Copyrights

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”

Protection vs. ‘practical’

Intellectual property (protection from the government issued on

paper)

vs.Business plan, financing, production,

marketing

This workshop will:

Assist you with a preliminary U.S. patent search via the U.S. Patent and Trademark Office website: http://www.uspto.gov/

Visit with a registered patent attorney for a professional search and potential submission of a patent application

Visit with a Small Business Development Center, etc.

Search Patent Literature

To see if a product has already been developed

For ideas to improve existing research For new areas of research

USPTO ESPACENET: European Patent Office

Preliminary Patent Research

Search at no charge to determine if an invention/research has already been patented—lessen need to proceed through the long, expensive patent process. (There are 7,500,000+ U.S. patents)

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 Patent Research

Just because it’s not on the shelves at Walmart doesn’t mean an item hasn’t been patented or doesn’t exist (there are 7,500,000 U.S. patents)

4% of what is patented enters commerce as a product or service

Patents are a key source of technical information not included in traditional literature searches, etc.

Search Using U.S. Classifications

Searching U.S. Classifications (470 subject categories) is critical to a good preliminary search

Keyword searching will yield incomplete results (USPTO or elsewhere)

Google Patents?

Google Patents http://www.google.com/patents Use to identify one or two relevant

patents Offers keyword searching to ‘1776’ versus

1976 (USPTO)

FreePatentsOnline http://www.freepatentsonline.com/

**Fine for keyword searches, but not in-depth preliminary research**

Search U.S. Trademarks

To see if a name or logo for a company, good, or service is in use

USPTO

Preliminary v. Professional

A search done on the USPTO website for U.S. patents or trademarks is a PRELIMINARY search (does not include other countries, etc.) Searching is complex and time consuming

Before applying for a patent or trademark, contact a patent attorney to have a professional search done (and the application)

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 assist with preliminary U.S. patent and trademark research

The Patent and Trademark Library at OSU

http://www.library.okstate.edu/patents/ 501 Edmon Low Library (405) 744-6546

Call to make an appointment Have a complete understanding of how

your invention works

Our Resources

Trained staff to assist you with the preliminary search process

Workstations to access full-text of U.S. patents and trademarks via U.S. Patent and Trademark Office Web site

Advanced search software from U.S. Patent and Trademark Office

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 Methods of doing business

Exceptions: software and Internet methods of doing business

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

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/)

Foreign Patents

Search foreign patents via the European Union site http://ep.espacenet.com/

Search using the international classification found on a U.S. patent

Coverage varies by country Not a complete search

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?

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

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 (a state trademark protects you in that state only)

Protection is indefinite, if fees are paid ® symbol is for a registered mark. “Tm” and “Sm”

indicate a pending or 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 ($45 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/

Trade Secrets

Patents are published, and eventually protection runs out

If something is so essential to a company’s business that they don’t want anyone else ever to be able to use it, they keep it as a trade secret and do not disclose it

Examples: the formula for Coca-Cola

USPTO Website

http://www.uspto.gov/

Basic information about patents and the patent process

Search issued and pending patents How to apply for a patent Fees and payments (see Patent Assistance

Center). (The basic filing fee for a utility patent is $500.)

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 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/

U.S. and International Classification Systems

U.S. and an international classification systems classify patents by technology groups

Noted on the first page of a patent

It is important to determine the appropriate classes/subclasses for your invention and to examine all of the patents in those classes/subclasses

There are 470+ U.S. ClassesFind classes applicable to your product/research

Each subclass within the class contains a list of issued patents

Each subclass meets certain criteria depending on the hierarchy

To determine where your invention/research fits in the 470 classes

Start with a keyword search Locate applicable patents Examine their classifications Search these classifications

Steps to Starting a Patent Search

1. Start at Google Patents http://www.google.com/patents 2. Click on Advanced Search 3. Think of words that describe your research/invention and type these in the

first box: “with all the words” 4. Look through the list of patents retrieved and locate a patent that is in your

area of research 5. Click on it and then click on “View Patent at USPTO” 6. Note the classes/subclasses on this patent 7. Plug these in at USPTO http://www.uspto.gov/go/classification 8. Click on the red ‘P’ to examine all patents in those classifications

9. Click on the blue ‘A’ to view applications in those classifications 10. Can also search by Inventor, Location, Date, etc.

For international patents search Espacenet http://ep.espacenet.com/

A motorized or automated shade system for an automobile

Example keywords automatic sun shade vehicle

Google Patents Advanced Search

4. Look through the list of patents retrieved

Click here for official U.S. patent with images

This is page one of patent no. 6,666,493: Automatic Sun Visor and Solar Shade System for Vehicles

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

296/97.4

296/97.8

Step 7: http://www.uspto.gov/go/classification/

In class 296 Land Vehicles, 97.4 With actuating means for moving

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.

This is the Definition for subclass 97.4, Glare screen or visor with actuating means for moving in class 264 Land Vehicles. Note the suggestions for other subclasses to search.

By clicking on the red P, this is a listing of the 206 patents in Class 296 Subclass 97.4

Click on the blue A for the pending patents.

Vehicle with a Protective Sun Shade in the Roof

Patent No. 6,536,829

Motor Driven Sunshield

Patent No. 6,227,601

Search Published Applications

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

Search Espacenet for foreign patents

Keep a Notebook

Keep track of your research by keeping a detailed notebook.

This will serve as proof of your invention in court, etc. before and after you file for a patent.

To easily print a U.S. patent when you have the number

Pat2PDF http://www.pat2pdf.org/ Full-text of U.S. patents in .pdf

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.