susan shepherd science & engineering...
TRANSCRIPT
Susan Shepherd
Science & Engineering Library
What‟s a patent?
US Patents
Steps in the US patent process
Searching the USPTO Database
International patents
Why do they matter?
Searching esp@cenet
Other patent resources
At UCSD
On the web
“The Congress shall have the
power to promote the progress of
science and useful arts by securing
for limited times to authors and
inventors the exclusive right to their
respective writings and
discoveries.”
An official document, issued by the U.S. Patent & Trademark Office, granting property rights to the inventor or assignee (owner of the patent).
Term is generally 20 years from the date of application in the U.S., if maintenance fees are paid.
Effective only in the U.S., territories and possessions.
What is granted is NOT the right to make, use, offer for sale, sell or import, but the right to EXCLUDE OTHERS from making, using, offering for sale, selling or importing the invention.
Patents may be licensed by the assignee to another party.
Utility Patents - 20 years from filing
Chemical
Mechanical
Electrical
Design Patents – 14 years from issue
Plant Patents– 20 years from filing
Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement,
subject to the conditions and requirements of the law.
Process A process for making a tennis string
Machine A machine for making tennis string
Articles of manufacture The tennis string itself
Composition of matter A new durable plastic for coating strings
Improvements to the above An improvement in the machine for making
strings
Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement,
subject to the conditions and requirements of the law.
The invention has a useful purpose
The invention will operate to perform the useful purpose, i.e. it works.
The invention has not been disclosed before (novelty). Public disclosure includes written (articles),
verbal (conference presentation), sale, or offer for sale (marketing).
In the US, there is a one-year grace period after public disclosure.
The invention is non-obvious to a person having ordinary skill in the art.
Conception
Reduction to Practice
Invention Report
UCSD Office of Technology Transfer (TechTips)
Downloadable Invention Disclosure Form
Summary of the invention
What is unique about it?
What is the existing art?
How does the invention work?
Potential applications
References
Conception
Reduction to Practice
Invention Report
(Prior Art Search)
Patentability Decision
Draft Patent Application
Description of the invention
One or more claims
Drawing(s) if necessary
Oath or declaration signed by inventor
Payment of fee
Claims not required
Less expensive to file
Is not examined by patent office
Establishes early filing date
Automatically abandoned after 1 year, unless “regular” application filed
File in USPTO
Assign to Examiner
Examiner’s Prior Art Search
Examiner’s Action
Applicant’s Response
Examiner’s Allowance
US Patent Issues
Abandonment
Regular fee Small entity fee
Filing 300 150
Search 500 250
Examination 200 100
Issue 1,400 700
Maintenance
3.5 yrs 900 450
7.5 yrs 2,300 1,150
11.5 yrs 3,800 1,900
Total $9,400 $4,700
These fees are minimal compared to the attorney costs to
prepare and prosecute the patent.
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.
Searchable at USPTO website
http://www.uspto.gov/main/trademarks.htm
A copyright protects authors of original artistic, musical or literary work, both published and unpublished.
http://www.copyright.gov/
©
New and innovative technologies
Competitive intelligence
Background on technologies not covered in the journal literature
Patentability
Freedom to operate
Studies have shown that up to 80% of all patents contain
new information not published elsewhere.
Claims are carefully worded statements that stake out the boundaries of the invention
You can „search patents‟ on the internet, but you can‟t „do a patent search.‟
To „do a patent search‟ is to legally determine the “patentability” of an invention.
Internet searches can‟t go back far enough to examine all public-domain prior art.
Prior art can be found in books, articles, conference papers, commercial publications, advertisements as well as patents.
Professionally done patent searches typically include a variety of databases using carefully constructed booleanstrategies and can cost $2000-5000.
To be comprehensive, you should search by U.S. Patent Classification.
Keyword searching can lead you into the appropriate classification code(s).
Patent Title:“Generally spherical object with floppy
filaments to promote sure capture” (1988)
http://www.uspto.gov/patft/index.html
Find it from S&E website http://scilib.ucsd.edu Online Resources by Type
Patents
In order to view images of patent pages, you must download a TIFF viewer. AlternaTiff plug-in from
http://www.alternatiff.com
Find more patents like the Heart Valve Stent patent (handout).
Hint: go to the USPTO web search site:http://www.uspto.gov/patft/index.html
Find patents for MP3 players assigned to Apple Computer
Hint: go to USPTO database:http://www.uspto.gov/patft/index.html
www.google.com/patents
Over 7 million patents
From USPTO collection
Uses Google search technology
Beware spelling errors, faulty OCR
Find patents for MP3 players assigned to Apple Computer
Hint: go to Google Patents:http://google.com/patents
Source: Michael White, Comparison of Free Patent Databases,
http://patentlibrarian.blogspot.com/2008/09/comparison-of-free-patent-databases.html
There are no “world patents”
Application must be filed in each country
Patenting cooperation treaties have simplified the process
Headquartered in Geneva, Switzerland
Agency of the United Nations
Administers patenting under the Patent Cooperation Treaty (PCT)
182 member countries
http://www.wipo.int/members/en/
Searchable database http://www.wipo.int/ipdl/en/
http://www.european-patent-office.org
Grants European patents for contracting countries to the European Patent Convention (EPC) – currently 33 members
http://www.european-patent-office.org/epo/members.htm
http://www.espacenet.com
Free web patent database from EPO
More than 50 million patent documents
Over 70 countries and regions
May be published in German, French, Japanese, or English
esp@cenethttp://www.espacenet.com
Advanced Search
Title: fluoresc* (*=truncation)
Applicant: university and california
Inventor: Roger Tsien
How many ?
Repeat without Applicant
Look at Inpadoc patent family
http://invent.ucsd.edu
UCSD Technology Transfer and Intellectual Property
Services Website (TechTips)
Downloadable Invention and Technology Disclosure Form
http://www.vonliebig.ucsd.edu/
UCSD Von Liebig Center
Advisory services and seed funding to
advance commercialization of discoveries
Patent Searching Basics –CaseLearns
http://library.case.edu/ksl/research/subjects/patents/Patents%20-%20CaseLearns.pdf
Brian GrayEngineering LibrarianCase Western Reserve [email protected]
Patents: What You Need to Know about Intellectual Property in 30 Minutes or Less
Penny Coppernoll-BlachReference LibrarianBiomedical LibraryUniversity of California, San Diego
Research US Patents on the Web
http://library.ucf.edu/GovDocs/PatentsTrademarks/Research.asp
Peter Spyers-Duran
University of CentralFlorida
Searching US Patents and Trademarks on the Internet -University of Utah
http://www.lib.utah.edu/govdoc/pto/PTDL4.htm
Dave Morrison
Documents and Patent Librarian
Documents and Microforms Division, Marriott Library
University of Utah
Gordon, Thomas T. Patent Fundamentals for Scientists and Engineers. Boca Raton: Lewis Publishers, 2000.
Call Number: S&E Stacks T 339.G67 2000
Grubb, Philip W. Patents for Chemicals, Pharmaceuticals and Biotechnology : Fundamentals of Global Law, Practice and Strategy. Oxford ; New York: Oxford University Press, 2004.
Call Number: S&E Stacks T 211.G76 2004
Wherry, Timothy Lee. Patent Searching for Librarians and Inventors. Chicago: American
Library Association, 1995. Call Number: S&E Stacks T 210.W44 1995
Susan Shepherd
Head, Reference, Instruction & Outreach
Science & Engineering Library
University of California, San Diego
http://scilib.ucsd.edu