Finding Intellectual Property Information

John Meiermeier@psu.eduScience Librarian

Pennsylvania State University

http://www.libraries.psu.edu/psul/researchguides/patents.html

I am not a lawyer

“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.”

U.S. Constitution, Article 1, Section 8

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”

Limited time

• 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

Exclusive rights

• Copyright = Automatically protected from unauthorized copying, registration is not required, but provides legal advantages

• Patent = Registration gives the right to exclude others from making, using, or selling the invention

• Trademark = Registration gives the right to exclude others from using the trademark in a particular industry and the trademark must be “well known”

Criteria for Copyright

• Copyright– 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)

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)

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)

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 art2. 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 for a patent to be approved?

• Application Filed• First Office Action Received• Response to Office Action Filed• Patent Allowed• Patent IssuedAt this time it takes an average of 34 months.• You can search in Public PAIR (Patent Application

Information Retrieval) for more information

18

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 cost to get a patent?

• The cost to obtain a U. S. Patent averages out to $20,000 (highly variable)

• Foreign patents can raise the expense to over $100,000 very easily

• The patent holder is responsible for bringing legal suit against infringement. Cases can be very slow or very expensive, costing millions of dollars– Courts may award lost profits, damages, and legal fees to

the plaintiff (patent holder)

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.

In December of 2012, US District Courts found Marvell Technology Group infringed on Carnegie Mellon University patents and awarded $1.17 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)• U.S. CL. and Field of Search

are Classification• References Cited• Representative Drawing

Parts of a Patent

The Disclosure

• Background of the Invention

• Brief Summary of the Invention

• Detailed Description of the Invention

• Claim(s)– Define the boundary of

legal protection

Search Strategies

• Patent Number Searching– Ex: 7294753

• Search by a known field: inventor or assignee– Ex: “Jobs, Steven” or “Apple Inc”

• Classification Searching– Ex: CLASS 800 = multicellular living organisms– SUBCLASS 800/4 = method of using a transgenic

nonhuman animal to manufacture a protein…

• CPC Class “A01K 2217/05”

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 downloadinghttp://www.google.com/patents • esp@cenet – European patent office website that

provides a search engine of worldwide patentshttp://worldwide.espacenet.com/

Custom Databases

• Patent Lens http://www.patentlens.net/ – Legal and genetic sequence data

• Patent Scopehttp://patentscope.wipo.int/search/en/search.jsf – Some visual display tools

• Non-patent literature– Scholarly journal and newspaper databases– Lionsearch

http://psu.summon.serialssolutions.com/

Finding Trademarks

• Why search trademarks?– Discover if a word or mark is already registered

• Search Tools– 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

• Patents on disc for large downloads• Publications of the USPTO

– Handouts and help sheets– Fee information (up to date)

• 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