new product development: the basics.. and preliminary patent research on the uspto web site suzanne...
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New Product Development: The Basics.. and Preliminary Patent Research on the USPTO Web Site
Suzanne L. Holcombe, MILSGovernment Information SpecialistOSU, 501 Edmon Low Library(405) 744-7086, [email protected]/patents/
You have a new product, technology, service (or an idea for
one)
What are your first steps?
Starting a Business
Startup: protecting your ideas (intellectual property) or checking to see if your invention or product already exists
Planning (business plan) Financing Marketing Employees Taxes Legal aspects
Intellectual Property
Property that can be protected under federal law. Patents Trademarks Copyrights
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
IP: Patents
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
Why are we talking about Intellectual Property?(patents, trademarks, copyrights, trade secrets)
When you have an invention or new research:
Check trademarks: To see if a name or logo for a
company, good or service is in use
Preliminary Patent, Trademark Research
Do a preliminary check of U.S. patents and trademarks to see if your invention or name already exists in the U.S. via the U.S. Patent and Trademark Office Web sitehttp://www.uspto.gov/
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 v. Professional
A search done on the USPTO Web site for U.S. patents or trademarks is a PRELIMINARY search (does not include other countries, etc.)
Before applying for a patent or trademark, contact a patent attorney to have a professional search done.
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 for assistance with 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
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 (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/).
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?
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, software
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
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, software and practically everything on the Internet, once “fixed in any tangible medium of expression” but register for more protection ($30 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
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 get a patent Registered Patent Attorneys & Agents Fees and payments (see Patent Assistance Center). (The
basic filing fee for a utility patent is $300, $150 if a small entity, plus fees for additional claims, etc.
Search patents (also patent applications – those that have been accepted)
File and check status (attorneys) See also Nolo Press’s title: Patent It Yourself, available
at the Library or via http://www.nolo.com/
‘Guides’ are below
Manual of Patent Examining Procedure
Guides: MPEP http://www.uspto.gov/web/offices/pac/mp
ep/index.html Laws and Rules
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 the decision making process
The patent process is costly (professional search $1,000.
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 (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/
Searching U.S. Patents on the USPTO Site
Patents may also be searched by field (inventor, assignee, city, state, etc.)
Patent application information is also available
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.
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
Divisions of patented technology
For more help see HELP at http://www.uspto.gov/go/classification/
There are 450+ Classes
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
Describe it as clearly as possible 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
Other ways to search Search by fields
Inventor Assignee City, State
Search patent application information via Public PAIR (Patent Application Information Retrieval) Images of correspondence sent to USPTO Availability depends on date filed and if
published after 18 months Also private PAIR for inventors and
attorneys