Finding Intellectual Property Information

John MeierScience 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 “What Chemists Need to Know about Copyright”

Criteria for Trademarks– can be a word, phrase, symbol or design– must already be used in interstate commerce

http://www.licensing.psu.edu/

Criteria for patentability

• Utility - must be useful, or have a use• Novelty - must be new (12-month grace period)• 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 to first response by USPTO28 months (on average)• Total time to issue of a patent34 months (on average)

Times vary by area of technology, you can find out the average for your area on the USPTO website.

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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 REALLY cost to get a patent?

• Provisional Patent Application $1600-3500• Conversion of Provisional to U.S. Patent Application

$5000-$10,000 in Attorney fees, $900 USPTO fee,possible $2500-$5000 PCT fee = $8400-$15,000

• First Office Action $2500-5000• Second Office Action $2500-5000• Drawing, Issue Fees and Publication $2000-4000• Maintenance Fee – 3.5 years $490• Maintenance Fee - 7.5 years $1240• Maintenance Fee – 11 years $2055Average cost around $20,000 with attorney fees but highly variable

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.

On August 24, 2012 a U.S. federal jury found that Samsung mobile devices infringed six of Apple’s patents and awarded $1.05 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/

Classification Searching

• USPTO Classification Search pagewww.uspto.gov/web/patents/classification/

• You can browse by class under “USPC Class Numbers & Titles”

• You can searching by selecting “USPC”• Get a list of issued patents by clicking the blue

icon of the letter “P”

Resources available at the PTRC

• Librarian: John Meier meier@psu.edu• 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

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