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DIY Patent Search Tools
- 1. DIY Patent Searching and Free Tools Karin Shank & Lori Melliere North Carolina Biotechnology Center Lunch & Learn - May 1, 2015 karin_shank@ncbiotech.org lori_melliere@ncbiotech.org
- 2. A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application. What is a Patent? N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 3. Utility Patents Design Patents Plant Patents • Novel – hasn’t been previously made available to the public • Non-obvious – must be sufficiently different from what’s already out there U.S. Patents N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 4. The provisional patent application is somewhat unique to the U.S. patent system. • Can be filed without formal claims • Establishes an earlier effective filing date • Lasts for 12 month Provisional Patent Application N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 5. Timeline N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R Source: Angela de Wilton, “Patent Value: A Business Perspective for Technology Startups.” Technology Innovation Management Review, December 2011. http://timreview.ca/article/501
- 6. U.S. Patent & Trademark Office (USPTO) www.uspto.gov European Patent Office (EPO) www.epo.org World Intellectual Property Organization (WIPO) www.wipo.int • www.wipo.int/directory/en/urls.jsp Selected Patent Offices N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 7. Patent Cooperation Treaty (PCT) N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 8. Espacenet worldwide.espacenet.com/ Global Patent Search Network (GPSN) gpsn.uspto.gov/ Google Patents www.google.com/patents The Lens (fka: Patent Lens) www.lens.org Selected Global Search Options N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 9. • Simple search box • Advanced search • Parts of a patent (abstract, claims, etc.) • Visualizations (charts, “family info” map) Searching Lens.org N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 10. • Browse USPC from here: http://www.uspto.gov/web/patents/classif ication/selectnumwithtitle.htm • Browse CPC from here: www.uspto.gov/web/patents/classification /cpc.html Patent Classification Codes N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 11. Patent Classification Codes for Plants Class 047 plant husbandry Class 504 plant protecting and regulating compositions Class 800 multicellular living organisms and unmodified parts thereof and related processes Class PLT plants Class 71 Chemistry: fertilizers Class 435/410 Plant Cell culture Some Biotech-related Classifications N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R Biotech Patents in North Carolina: (ccl/424/$ or ccl/435/$ or ccl/514/$ or ccl/800/$) and as/nc
- 12. • Search page – Seven Step Strategy – Full-text, PDF, or patent application database – Assignee vs. Inventor – Classification Codes Searching the USPTO database N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 13. • www.freepatentsonline.com • Set up saved searches, patent portfolios and alerts Free Patents Online N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 14. • Keep abreast of patents by: Alerts in a variety of formats Email RSS
- 15. • Any questions or input? Thanks! Karin Shank Research Librarian Lori Melliere Librarian karin_shank@ncbiotech.org lori_melliere@ncbiotech.org
- 16. END – extra slides after in case needed N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 17. • Orphan Drugs = 7 years • New Chemical Entity = 5 years • “Other” exclusivity = 3 years • Pediatric Exclusivity = 6 months added to existing patents/exclusivity Exclusivity (FDA) N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R
- 18. N O R T H C A R O L I N A B I O T E C H N O L O G Y C E N T E R 0 20 40 60 80 100 120 2006 2007 2008 2009 2010 2011 2012 2013 2014 Plant-related Patents Granted in NC Source: NCBiotech data analysis of USPTO data, using codes on previous slide.
Editor's Notes
- A few disclaimers before we get started: I am not by any means an expert patent searcher, it’s not something I do every day. So if you hear anything that is outdated or inaccurate, please let us know! Also, if you have your own tips or resources to add, we’d love to hear about them. Second: We are librarians, not lawyers. We do this time of searching for competitive intelligence and market research. But when it comes to protecting your IP, please make sure that you do it right and use a patent attorney! In today’s session I’m going to briefly discuss the process of filing a patent, and then get into free sources for searching patents. Then Lori is going to show you a free resource that allows you to search and set up patent alerts around topics of interest to you or your company. We want this to be informal, so feel free to interrupt with questions or suggestions throughout.
- I found this definition on the website of the World Intellectual Property Organization, which we’ll be talking about in a little bit. I liked it because it is straightforward and not full of ‘legalese’. That second sentence is key in understanding how the patent process works. Those of you who are researchers and may have filed patents in the past are well aware of the importance of timing in filing a patent. Once a patent is filed, the technical information about how your new technology or process works becomes publically available. So there’s a balancing act between gathering enough information beforehand, so that the patent you file is complete and protects your investment and your work; but also getting it filed in time to beat your competition. Typically, the rights described here are granted by a specific country or region. Rights and filing requirements (and the costs to file a patent) may differ between these various entities.
- So let’s have a quick look at patents offered by the U.S. government. There are three types: Utility patents are the most common that you will likely be searching for in a scientific research setting. They cover “any type of new and useful process, machine, article of manufacture, or composition of matter, or any new or useful improvement thereof” Design patents are for new, original and ornamental design for an article of manufacture. The patent will typically consist of mainly drawings. This photo on the right is a design patent, of the original Coca-Cola bottle filed in 1915. Plant patents are specifically to protect any distinct and new variety of plant (invented, reproduced or discovered) – so some of you may run into these as well. An invention typically cannot be patented unless it is “novel” and “non-obvious”. You can actually work against yourself on this one if you’re not careful. Any public disclosures of the information before the patent is filed (like presenting the information at a conference, publishing an article, or posting a YouTube video) could hurt the novel claim and prevent your patent from being granted. Patents may also not be granted if the invention is obvious. For example, if there’s an invention already patented, and you try to patent a change to the size or color.
- The provisional patent application option was established in 1995 as a way to begin the filing process before you quite have all your information. It gives you 12 months to keep working on your research to finalize the patent claims. If you file a full application within those 12 months, or convert it to a nonprovisional application, you will be able to claim a filing date from when you filed the provisional patent. A difference of even one day in the filing date can make or break your invention if a competitor files before you do!
- Here’s what the timeline of a typical utility patent might look like, according to a 2011 article that I found. The author is a registered patent agent in the US and Canada who runs her own IP strategy company. She stated that a typical patent will cost $25-35K per country, over the 20-year life of the patent. There’s some disagreement on the internet about how long it can take for a patent to be granted, but most sources seem to agree it will be at least 3 years from application to approval within the U.S. system these days, and it can range up to 5 or 6 years. -------------------------------------------------- Design patents only last for 14 years Plant patents last for 20 years with no maintenance fees
- Here are links to the U.S. and European patent offices, which each have their own searchable databases. Of course, many other countries have patent registry websites, and the World IP Organization WIPO has a nice comprehensive list of links for all these global office. WIPO is a self-funding agency of the United Nations, with 188 member states. Established in 1967.
- WIPO is also important, because through their Patent Cooperation Treaty, an applicant can file one international patent application which simultaneously seeks protection for their invention globally, in 148 different countries (those shaded in blue on this map). Applicants file through their national patent office, following the guidelines and parameters of the PCT. They pay an international filing fee of 1330 Swiss francs (almost equivalent to the dollar), plus a search fee which can be up to 2300 Swiss francs and a transmittal fee which varies depending on your office.
- A program of the EPO, Espacenet offers free access to more than 90 million patent documents worldwide, containing information about inventions and technical developments from 1836 to today. Searchable in German, English and French. Launched by the USPTO in July 2013, the Global Patent Search Network database is being developed for users to search non-U.S. patents in both English and the patent’s native language. The patents are machine-translated to English. It initially includes patents from the People’s Republic of China from 1985-2012. There are plans to add additional international patent collections in the future, but at this point the USPTO site points people to Espacenet for more global searching. Google patents is not really the best source for these, but I threw it into the presentation because it is readily available and everyone is used to the search interface. [search for “geranium”, then flip over to “utility patent”] Personally, I really like searching The Lens. This database started out of Australia, and is constantly improving and growing to include new features. I find it much more straightforward to search than the government sites. Within the next two years, they expect to host over 95% of the world’s patent information and link to most of the scholarly literature, creating open innovation portfolios. Current datasets include EPO, USPTO, WIPO and Australian patents with full text. The software itself is open source and they encourage its use.
- Search Karin Shank in main search box. The first and third are my actual patents, but the second one is not. If we go back and click on the little wheel button, it will let you do a more advanced search. These are now all BASF patents that my name is actually on. Click through to second page and point out the differences in numbering between applications and granted patents. Page 3 of results is good to show the US differences. Look at cited articles tab you can expand on left. Look at a specific patent record. Talk about abstract, claim, background, full text tab, or full text preview from summary (looks like the real thing). Look at the charts which appear with your search, unfortunately it doesn’t look like you can click to see them more clearly. Click into a patent to look at the “family info” tab which has a map. Look at sequences tab. Can add your own notes (to whole document or sections) and create your own collections of patents, if you create an account.
- Before we look at how to search from the US patent database, I want to mention patent classification codes. The main reason I would use the USPTO website instead of a site like lens.org is if I need to search in very specific ways, like with the classifications. I don’t know a lot about these, but I wanted to share about them a little bit because they are really complicated to search. USPC is the longer-standing US patent classification codes. CPC is “cooperative patent classification”, and attempt to harmonize the classification systems from the US and European patent offices. Both allow you to browse the categories, and I’ve typically found that the best way to find a new set of patent classification codes is to browse in to a certain point and then do a Ctrl-F search on the page to identify further hits. Alternatively, if you know of a company or patent who has similar technology, you can look at those patents and see how they are classified. Or look online to see if anyone has already identified an appropriate set of codes.
- These are USPC classifications, we really haven’t started looking into the CPC codes yet since that is fairly new. These are some codes that we identified when we’ve had to show how many biotech or plant-related patents North Carolina has filed in a particular time period.
- The main search page linked here is a good place to start with searching the USPTO database They provide what they call a “seven step strategy”. There is also a web-based tutorial and extensive handout with screenshots to help you through this strategy. Then, you have to choose what database you want to search – patents (full text since 1976) or patent applications There are a number of fields that may be helpful in your search, depending on what you’re looking for. Assignee is typically the company or institution which filed the patent, though it can also be an individual. Inventor is the person or multiple people who discovered the new process or did the research. Others are mostly self explanatory. Let’s look at that biotechnology search we had on the previous page: (ccl/424/$ or ccl/435/$ or ccl/514/$ or ccl/800/$) and as/nc So sometimes you might have a search like this that you want to set up as an alert, so you can receive regular updates when new patents are published. I’ll turn this over to Lori to demonstrate one specific resource we have recently identified which can do this for you.
- There may be certain topic areas that you need to stay on top of, and the tool I want to show you is great for pushing out notifications. I like FPO because it is user-friendly (and when it’s not, it has a great help section), has high functionality and flexibility (so notifications are as customized as you need them to be), and is free. It’s pretty comprehensive as well (US patents, US design, US plant, US Statutory Invention Registrations, European patents and applications, Japanese patents, WIPO)
- RSS: set up general alerts to your RSS reader by patent class Email: set up your own customized searches, and get notified as often as you’d like (the USPTO publishes about 3500 patents every Tuesday, so probably won’t do any good to set up daily alerts). Other functions – save patents in dedicated portfolios, share patents with colleagues
- Exclusivity is something separate from the patent life, but only comes into effect if it extends beyond the patent life. Exclusivity is granted by the FDA [for example, 7 years for orphan drugs, 5 years for a new chemical entity, etc.] For example, if a drug is under development for 15 years before it comes to market, there may be only 5 years left before the patent expires and generics could come on the market to compete. So if it is an orphan drug, you might have another 2 years before anyone is allowed to compete. It’s probably never that straightforward, but
- Here’s an example of what can be done, with an analysis of a particular set of codes. We were originally asked to provide a comparison, or show the growth of ag-related patents in North Carolina. What’s interesting about this example is that all the animal health related research, which could also count in that category, is under the same codes as human health.