How to Find Intellectual Property Information in Chemistry

John Meiermeier@psu.edu

Penn State’s Patent and Trademark Resource Center

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

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

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 (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

1. 0 month, Green invents2. +1 month, Smith invents3. +6 months, Smith publishes4. +3 months, Green files patent application (10 months after invention)5. 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

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 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 are very slow and 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 order to compete with Apple in the mobile phone market in August 2011 Google purchased Motorola Mobility for $12.5 billion USD, getting over 17,000 patents.

“Prophetics” in Patents

• Since there is no requirement that experimental evidence or working models of an invention be included in a patent application, prophetic patents are routinely granted for inventions that have yet to be tested

• In chemistry a newly identified substance can be described even if it has not yet been produced

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 ToolsU.S. PTO Website – Free database of U.S. patents – limited searchinghttp://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/

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”

Chemistry Databases• Scifinder Scholar

– Patents included in literature results– Next day patent data international patent offices– Selected US patents back to 1828

• Reaxys– Patents included in structure and literature results– US patents from 1976 and some back to 1920, and

World and European patents from 1978

• SureChem– Free website with structure searching

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– Writing chemistry patents and intellectual

property: a practical guide– Patent Pending in 24 Hours