New Product Development: Preliminary Patent Research on the

USPTO Web Site

Suzanne L. HolcombeGovernment 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

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

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

New Product Development

Check patent literature to see if a *product has been developed*

Check trademarks to see if a *name or logo for a company, good or service is in use*

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 to do a preliminary U.S. patent or trademark search.

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 (the formula for Coca-Cola)

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 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

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 Business forms and other printed matter

(not associated with some hardware) Scientific principles in abstract (without

hardware)

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/).

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 successfull 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

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.

State & Common Law Trademarks

State protection available if doing business in one state only Apply to the Secretary of State of the

state

Common law protection available for a limited region Rights afforded when you start using the

mark in commerce

Why do a Trademark Search?

A search of federally registered or state marks will indicate names already in use

No reason to select a name that has potential conflicts

Besides trademark databases, a well-crafted search of the Internet will be valuable too

Trademark Resources

USPTO Trademark Web site http://www.uspto.gov/main/trademarks.htm Search the trademark database (TESS) or file a trademark application online

State Trademark Agencies Online http://statetm.tripod.com/ Links to the agencies that register trademarks in each state

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, and practically everything on the Internet, once “fixed in any tangible medium of expression”

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

Examples: the formula for Coca-Cola, the recipe for Kentucky Fried Chicken

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 $770, $385 if a small entity.

Help (Patent Assistance Center) Search patents (also patent applications – those

that have been accepted) See also Nolo Press’s title: Patent It Yourself, available at the

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

The First Step: a Preliminary Patent Search Patent searchers often find that something

similar to theirs has been patented, and they don’t need to proceed through the long, expensive patent process

There are 6,900,000+ U.S. Patents Just because it’s not on the shelves at ______

doesn’t mean an item hasn’t been patented or doesn’t exist

The more information available, the better for the decision making process

The patent process is costly

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.

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

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

An example follows on the next screen

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

USPTO class/subclass system, example

http://www.uspto.gov/go/classification/ (where 040 is replaced by the class you’re investigating)

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

Each list may have as few as 40 or as many as 400 patents in it.

The dots work as an outline.

All the patents on 43/206 meet the criteria of License Plates: Illuminated, With Translucent Plate, Plural or Sectional.

Search Example Using the Index

A motorized or automated shade system for an automobile

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

Think of key terms to describe the item and look them up in the Index.

Click on “A” in the A-Z list and scroll down to ‘Automobile.’ Scan to see if there are entries that relate to a sun screen. There are none.

After a few more tries (sun, shield, etc.), it is finally under Glare, 97.1

In class 296 Land Vehicles, scan below 97.1 to see if a more specific subclass can be identified.

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 185 patents in Class 296 Subclass 97.4

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

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

296/97.4

296/97.8

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

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 automatic and sun and shade and vehicle

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

Automatic sun visor. 9 patents into the list of 158 patents.

Note classes and subclasses. If this patent is close to your idea, all of the patents in these classes/subclasses should be examined.

Click here to see the full-text and images of the patent. Requires plug-in. Read the claims to see what this patent protects.

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

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.