Patents and Intellectual Property for Business Students

Finding Intellectual Property Information John Meier Science Librarian Pennsylvania State University http://www.libraries.psu.edu/psul/researchguides/patents.html

“ 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”

“ 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

Special terms
“ Limited times”
Copyright = Life of the author + 70 years
Utility patents = 20 years from filing
Design patents = 14 years from issue
Trademarks = Renewed as long as product in the market

Special terms
“ Exclusive right”
Copyright = Automatically protected from unauthorized copying
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
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
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

How long for a patent to be approved?
Application Filed
First Office Action Received
Response to Office Action Filed
Patent Allowed
Patent Issued
At this time it takes an average of 22 months .
You can search in Public PAIR (Patent Application Information Retrieval) for more information

How much does it cost to get a patent?
Utility Patent Fees: Non-Provisional Application for a Small Entity Minimum
Filing fee, $82 (electronic filing) / $ 165
Search Fee, $270
Examination Fee, $110
Issue Fee, $755
Maintenance Fees:
3.5 yrs. $490
7.5 yrs. $1240
11.5 yrs. $2055
$5,000 over the life of the patent
(as of 10/12/09, subject to change)

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.
License enforcement can include collection of fees and royalties, auditing as needed, due diligence, renegotiation, termination, etc

Broad or Vague Patents
Ex: Amazon’s One Click patent #5,960,411
Successfully shut down Barnes & Noble competing service in 1999 and the Supreme Court agreed
In 2008, USPTO rejected a patent for a business strategy on managing weather-related risk through commodities trading.
Supreme Court just ruled that it did not meet an older definition of “process” under patent law.
Broad and/or vague patents may be denied and the approval process takes much longer

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

Why search patents?
To find out whether something is patentable
To discover what resources are needed
To learn how things work
To revisit answers that others have found to your own technological questions.
To identify a research direction taken by a specific company or inventor
To research the history of inventions and inventors

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…

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 downloading
http://www.google.com/patents
esp@cenet – European patent office website that provides a search engine of worldwide patents
http://worldwide.espacenet.com/

Custom Databases
Boliven
http://www.boliven.com/
Limited capabilities for free, more for a fee
Basic and advanced patent searching and analytics
Non-patent literature
Scholarly journal and newspaper databases
Lionsearch http://psu.summon.serialssolutions.com/

Finding Trademarks
Why search trademarks?
Discover if a word or mark is already registered
Search Tools
TESS and TEAS – free databases from the U.S. trademark office for trademarks and applications
You can do a visual or a text based search
Design Codes are used for image searching
Use wildcards “*” and “$” to find spelling variations

Resources available at the PTRC
Librarian: John Meier [email_address]
Patents on disc for large downloads
Publications of the USPTO
Patent print indexes (historical)
Handouts and help sheets
Fee information (up to date)
Books on patents, trademarks and inventing and how to search for IP information

Patents and Intellectual Property for Business Students

by John Meier on Oct 03, 2011

Accessibility

Categories

Tags

Upload Details

Usage Rights

Statistics

Patents and Intellectual Property for Business Students — Presentation Transcript