patent searching 101

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What is a Patent?

A patent is...• a property right granted by the Government of the

United States of America to an inventor,• “to exclude others from making, using, offering for

sale, or selling the invention throughout the United States or importing the invention into the United States,”

• for a limited time,• in exchange for public disclosure of the invention

when the patent is granted.

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Requirements for a Patent

• New• Useful• Unobvious• Fully disclosed

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3 Types of Patents

• Utility Patents – granted for a useful process or method, machine, manufactured article or composition of matter.

• Term: 20 years from filing date

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3 Types of Patents

• Design Patents – granted for new, original and ornamental design for an article of manufacture: the appearance is protected. • Term: 14 years from the date the

patent is granted

• Plant Patents – granted for a new, asexually reproduced plant. • Term: 20 years from filing date

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What CANNOT be Patented?

• Inventions which are NOT NEW• Inventions which are OBVIOUS

variations of known technology (obvious to one familiar with technology)

• ABSTRACT ideas

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What Cannot Be Patented? Changes from the Patent Reform

Act (S.23)• Inventions MADE PUBLIC more than one year

prior to patent application filing date OR made public by other independent inventor before the first inventor files an application.

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Utility Patent Fees for Small Entities (as of 10/1/11)

Initial Filing Fee: $95 (electronic) / $190 (paper)Search Fee: $310Examination Fee: $125Issue Fee: $870Maintenance Fees:

• 3.5 years: $565 • 7.5 years: $1425• 11.5 years: $2365

Prioritized Examination (opt.): $2400* Provisional Patent Application Filing Fee: $125*

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Process for Obtaining a Utility Patent

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Why Are Patent Searches Necessary?

• To make sure your idea is new, to search for prior art

• To increase awareness of the product field

• To prepare for consulting an attorney• To reduce patent attorney/agent fees• To prepare for the application process

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Ways to Search for Patents on USPTO Databases

• By Patent Number or Publication Number

• By Keyword (full text or selected fields)• Some problems: only from 1976 forward;

inconsistent terminology; obsolete names; synonyms (e.g. rodent extermination device); British spellings; spelling errors

• By U.S. Patent Classification• Recommended; Classification systems

categorizes things based on characteristics and relationships

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U.S. Patent Classification

• There are currently 450 classes and 150,000 subclasses in the U.S. Patent Classification System (USPC).

• Use the online index to navigate USPC

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7 Step Preliminary Patent Search Overview

• USPTO has developed a 7 Step Patent Search Strategy to increase the likelihood a novice searcher will do a thorough job of a preliminary patent search.

• Remember: all it takes is one patent to refute the “novelty” of one’s invention.

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A Sample Granted Patent

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Patent Search Example

A dog harness that carries a water pouch and has an attached water dispenser.

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Step 1: Description of Invention

What does it do?• Essential function of the inventionWhat is the end result?• Essential effect or basic product resulting from

the inventionWhat is it made out of?• Physical structure of the inventionWhat is it used for?• Intended use for the invention

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Step 1: Description of Example, cont.

What does it do?• An animal vest/harness that carries water and

dispenses water for the animalWhat is the end result?• Water is stored in the vest/harness and is

expelled through a connected dispenserWhat is it made of?• Polyester, plastic tubing, etc.What is it used for?• Used to spray water into dog’s (or other

animal’s) mouth, or to spray dog’s paws.

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Step 1: Description of Example, cont.

Consider Synonyms• Dog, pet, animal, etc.• Vest, harness, pouch, dispenser etc.• Liquid, water, etc.

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Step 2: Determine Classification Using the Index to U.S. Patent Classification

• Use the Index to find potential class(es) and subclass(es).

• Look up each term that describes the invention, e.g. function, composition, etc.

http://www.uspto.gov/web/patents/classification/uspcindex/indextouspc.htm

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Step 5: Search U.S. Patents & Published Patent Applications

You have the class/subclass, now search!USPTO has two searchable patent publication

databases:• PatFT (Patents Full-Text)

• Patents back to 1976 accessible by keyword searching and class/subclass

• All U.S. patents back to 1790 by class/subclass or patent number.

• AppFT (Published Patent Applications Full-Text)

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Clicking on the P button next to subclass 72 will run the search for all patents within that class/subclass (119/72) in the PatFT database.

Clicking on the A button will run the search for all published patent applications within that class/subclass in the AppFT database.

Step 5: Search Each Database Separately Using A & P Buttons

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7 Step Patent Search Review

1. Brainstorm keywords to describe the invention.2. Use these keywords to find initial class/subclass

in the Index to the U.S. Patent Classification.3. Verify the relevancy of class/subclasses using the

Classification Schedule.4. Confirm scope of subclass in Classification

Definitions.5. Access patent documents and published patent

applications using classification in PatFT & AppFT.6. Review the claims, specifications, and

drawings of documents retrieved.7. Retrieve and review cited references and “Field

of Classification Search” in documents retrieved.

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Patent Attorney or Agents

USPTO recommends hiring an attorney or agent for assistance in preparing a patent. Patent preparation in legal language is a challenge.

Registered attorneys and agents are listed on the upsto.gov website:

https://oedci.uspto.gov/OEDCI/GeoRegion.jsp

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Patents 101: Final Notes

• Document your searches! Write down what classifications you’ve searched, the databases you used, keep a list of patents and applications reviewed.

• Use the U.S. Patent Classification Suggestion form (included in packet)

• Explore the USPTO website• Milwaukee Public Library has numerous

books to help in the patent process.

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Contacts

• USPTO Contact Center: (800) PTO-9199

• Patent Electronic Business Center: (866) 217-9197

• Milwaukee Public Library Business and Technology: (414) 286-3051

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