The slides from a presentation given on Patent Basics as part of our Patent and Trademark Resource Center (PTRC) services.

1. Arizona State Library,
Archives and Public
Records
Presented by:
Peter Grant, Librarian
State Library, Archives & Public Records, a division of the Secretary of State
PATENT BASICS 2015

2. Arizona State Library,
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Records
OUTLINE
 What is a patent?
 Requirements for patentability
 3 types of patents
 Provisional applications
 What it costs
 Steps
 Search resources
 Classification systems
 Sources for free help
 Tips for working with an attorney

3. Arizona State Library,
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WHAT IS A PATENT?
 The grant of a property right to the inventor, issued by the
United States Patent and Trademark Office.
 A patent obtained in the U.S. gives the patent holder the
right, for a limited time, to exclude others from making,
using, offering to sell, selling, or importing into the U.S.
the subject matter that is within the scope of protection
granted by the patent.
 U.S. Constitution: Article 1, Section 8, Clause 8
“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.”

4. Arizona State Library,
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REQUIREMENTS FOR PATENTABILITY
So can I patent my idea?

5. Arizona State Library,
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PATENTABILITY REQUIREMENTS
 “…any new and useful process, machine, article
of manufacture, or composition of matter, or any
new and useful improvement thereof…”
 Process - a process, act, or method, and
primarily includes industrial or technical
processes
 Composition of matter - chemical compositions
and may include mixtures of ingredients as well
as new chemical compounds

6. Arizona State Library,
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NOVELTY
 “the claimed invention was patented,
described in a printed publication, or in public
use, on sale, or otherwise available to the
public before the effective filing date of the
claimed invention”
 “the claimed invention was described in a
patent issued [by the U.S.] or in an
application for patent published or deemed
published [by the U.S.], in which the patent or
application, as the case may be, names
another inventor and was effectively filed
before the effective filing date of the claimed
invention.”

7. Arizona State Library,
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NON-OBVIOUSNESS
 “…must be sufficiently different from what
has been used or described before that it
may be said to be non-obvious to a person
having ordinary skill in the area of technology
related to the invention.”
 “For example, the substitution of one color
for another, or changes in size, are ordinarily
not patentable.”

8. Arizona State Library,
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NON-OBVIOUSNESS
“…Nikon does not
explain
persuasively why a
person of ordinary
skill in the art could
not have....”
Case IPR2013-
00362 (p26)

9. Arizona State Library,
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WHAT CANNOT BE PATENTED
 Laws of nature
 Physical phenomena
 Abstract ideas
 Mere ideas or suggestions
 “A complete description of the actual
machine or other subject matter for which
a patent is sought is required”

10. Arizona State Library,
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SOUNDEX
“Index where names entered are
grouped phonetically, rather than
alphabetically”
“Names with the same sound, but
different spellings will be grouped
together”
Stewart = S363
Stuart = S363
1 = b, f, p, v
2 = c, g, j, k, q, s, x, z
3 = d, t
4 = l
5 = m, n
6 = r

11. Arizona State Library,
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3 TYPES OF PATENTS

12. Arizona State Library,
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3 TYPES OF PATENTS
Utility Design Plant

13. Arizona State Library,
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UTILITY
…may be granted to
anyone who invents or
discovers any new and
useful process,
machine, article of
manufacture, or
composition of matter,
or any new and useful
improvement thereof;
Term: 20 years from
date of filing

14. Arizona State Library,
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DESIGN
…may be granted to
anyone who invents a
new, original, and
ornamental design for
an article of
manufacture;
Term: 15 years from
date of filing
Patent Law Treaties Implementation Act
(PLTIA) of 2012

15. Arizona State Library,
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PLANT
…may be granted to anyone who
invents or discovers and asexually
reproduces any distinct and new
variety of plant
Rooting Cuttings
Grafting and Budding
Bulbs
Apomictic Seeds
Division
Slips
Rhizomes
Corms
Nucellar Embryos
Tissue Culture
Runners
Term: 20 years from date of filing
“The present invention has been found to
retain its distinctive characteristics
through successive asexual propagations
via stolons.”
-US PP24,512

16. Arizona State Library,
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PLANT
PLANT PATENT (USPTO)
 U.S. Plant Protection Act of
1930
 Asexually reproduced
(excluding tuber)
 20 years
PLANT VARIETY PROTECTION ACT (USDA)
 Plant Variety Protection Act
of 1970
 Sexually reproduced
(including tubers)
 20 years

17. Arizona State Library,
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PROVISIONAL
Not a type of patent, a type of application

18. Arizona State Library,
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PROVISIONAL PATENT APPLICATION
 Is not a “provisional patent”
 Is not examined
 Not required to have a formal patent claim
 Provides the means to establish an early effective
filing date in a later filed nonprovisional patent
application
 Allows the term "Patent Pending" to be applied in
connection with the description of the invention
 Utility only – no provisional design patents
 12 months from the date the provisional application is
filed

19. Arizona State Library,
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PROVISIONAL PATENT APPLICATION
 To be complete, a provisional application must
also include the filing fee as set forth in 37 CFR
1.16(d) and a cover sheet identifying:
 the application as a provisional application for patent;
 the name(s) of all inventors;
 inventor residence(s);
 title of the invention;
 name and registration number of attorney or agent and
docket number (if applicable);
 correspondence address; and
 any U.S. Government agency that has a property interest
in the application.

20. Arizona State Library,
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PROVISIONAL PATENT APPLICATION
“A filing date will be accorded to a provisional application only when
it contains a written description of the invention, complying with all
requirements of 35 U.S.C. §112(a).”
35 U.S.C. §112(a)”
In General.— The specification shall contain a written description of
the invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best
mode contemplated by the inventor or joint inventor of carrying out
the invention.
http://www.uspto.gov/patents-getting-started/patent-basics/types-
patent-applications/provisional-application-patent

21. Arizona State Library,
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WHAT A PATENT COSTS
Depends… Invention, USPTO, Attorneys, Agents

22. Arizona State Library,
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INVENTION
 Complexity
 Number of claims
 Detailed drawings
 Prior art

23. Arizona State Library,
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USPTO FEE SCHEDULE

24. Arizona State Library,
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USPTO FEES
Regular Small Micro
Filing:
Provisional
$260 $130 $65 (optional)
Filing: Non-
provisional utility
$280 $70 $70
Search Fee $600 $300 $150
Examination Fee $720 $360 $180
Issue fee $960 $480 $240 ($640)
Maintenance
Fee 3.5 years
$1600 $800 $400
Maintenance
Fee 7.5 years
$3600 $1800 $900
Maintenance
Fee 11.5 years
$7400 $3700 $1850 ($3790)

25. Arizona State Library,
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MICRO ENTITY
 Qualify as a USPTO-defined small entity.
 Not be named on more than four previously filed
applications.
 Not have a gross income more than three times
the median household income in the previous
year from when the fee(s) is paid.*
 Not be under an obligation to assign, grant, or
convey a license or other ownership to another
entity that does not meet the same income
requirements as the inventor. *2013 Median household income: $51,939
(Reported by U.S. Census, September
2014)

26. Arizona State Library,
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ATTORNEY FEES
Attorney Rate (Median 2012)
All $350 / hr.
Private firm partner $425 / hr.
Solo practitioner $288 / hr.
Original nonprovisional
application on invention of
minimal complexity
$6500
US design patent
application
$1500
Novelty Search $2000
AIPLA Report of the Economic Survey 2013

27. Arizona State Library,
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WHAT’S THE DIFFERENCE?
ATTORNEYS AGENTS
*USPTO November, 2013
31,638* 10,864*
Passed the Patent Bar
(Technical qualification)
Passed the Patent Bar
(Technical qualification)
Passed a state bar No state-level licensure
Juris Doctorate degree No Juris Doctorate
Patents, trademarks,
contracts, court proceedings
Patent prosecution only

28. Arizona State Library,
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STEPS
The “Patent Process”

29. Arizona State Library,
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PATENT PROCESS
1. Search
2. Type of patent / application
3. Filing strategy
4. Drafting of application
5. USPTO examines
application
6. Patent is granted

30. Arizona State Library,
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USPTO: APPFT, PATFT, PAIR, AND EAST
Free resources for your patent search

31. Arizona State Library,
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Records
APPFT - HTTP://PATFT.USPTO.GOV/
 Published patent
applications
 All published patent
applications since
March 2001
 All patent
applications are
automatically
published after 18
months, unless
applicant opts-out
(5.9%)
Coverage

32. Arizona State Library,
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APPFT - HTTP://PATFT.USPTO.GOV/
 Quick search
(choose field)
 Advanced Search
(build a query)
 Search field
explanations and
search tips
 Help
Features

33. Arizona State Library,
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Records
PATFT - HTTP://PATFT.USPTO.GOV/
 Published United
States Patents
 Full text searching
1976-present
 1790-1975
searchable by Issue
Date, Patent
Number, and Current
Classification
Coverage

34. Arizona State Library,
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Records
PATFT - HTTP://PATFT.USPTO.GOV/
 Quick search (choose
field)
 Advanced Search
(build a query)
 Search field
explanations and
search tips
 Help
Features

35. Arizona State Library,
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Records
PUBLIC PAIR - HTTP://PORTAL.USPTO.GOV/PAIR/PUBLICPAIR
 Issued or published
patent applications
 Foreign priority
documents referred
to by a U.S.
application
 2001-present
 Patent “wrap”
 Application
 Examiner search
 Correspondence
Coverage

36. Arizona State Library,
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PUBLIC PAIR - HTTP://PORTAL.USPTO.GOV/PAIR/PUBLICPAIR
 Search by:
 Application
Number
 Patent
Number
 PCT Number
 Publication
Number
 International
Design
Registration
Number
Features

37. Arizona State Library,
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PUBWEST / PUBEAST
 Full text searching from 1976 – present
 OCR text searching from mid 1920’s
 EPO and JPO abstracts
 More powerful search capability

38. Arizona State Library,
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NON-USPTO: ESPACENET, FREEPATENTS ONLINE
AND LENS
Free resources for your patent search

39. Arizona State Library,
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Records
ESPACENET - HTTP://HTTP://WORLDWIDE.ESPACENET.COM/
 90+ million
patent
documents
 Over 90
countries
 38 EPO
member
states
 1836 - present
Coverage

40. Arizona State Library,
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Records
ESPACENET - HTTP://HTTP://WORLDWIDE.ESPACENET.COM/
 Can search
CPC scheme
with
keywords
 Help
Features

41. Arizona State Library,
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FREE PATENTS ONLINE
 US Patents and
applications
 EPO Patents and
applications
 JPO Patent documents
and patent abstracts
 German Patents (beta)
 Non-patent literature
Coverage

42. Arizona State Library,
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FREE PATENTS ONLINE
 Search
tutorial: step-
by-step
 Glossary
 Alerts to new
patents
Features

43. Arizona State Library,
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THE LENS
 The European Patent Office’s DocDB
bibliographic data from 1907 - present: 81+
Million documents from nearly 100
jurisdictions.
 US Applications from 2001 – present
 US Patents 1976 – present with full text
and images.
 USPTO Assignments (14+ Million).
 WIPO PCT Applications from 1978 –
present with full text and images.
 Australian Patent Full Text from IP Australia
Coverage

44. Arizona State Library,
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THE LENS
 Represents data
graphically
 User-friendly
structured search
form
 Hyperlinks to non-
patent literature (5
million)
 Knowledge
database
Features
Patent Knowledge Quiz
How To Read a Patent
Boolean Logic Tutorial

45. Arizona State Library,
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Records
SEARCH
Patent Classification

46. Arizona State Library,
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Records
KEYWORDS
 Too broad
 Too narrow
 British spellings or
terms
 Typos or OCR errors
 Multiple meanings
 Term of art may not
be used
 Term of art may not
yet exist
Photo Credit:
Aqazi1411
Photo Credit: Albert Jankowski

47. Arizona State Library,
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MULTIPLE TERMS
 Automobile
 Vehicle body
 Vehicle exterior
 Vehicle
 Passenger car
 Automobile vehicle
 Portion of a vehicle exterior
 Motor car
 Motor vehicle body
 Motorcar
 Sports car
 Motor-vehicle
 Exterior surface configuration of a vehicle
 Surface configuration of a vehicle body
 Surface configuration of a vehicle, toy and miscellaneous consumer products
incorporating the design
Design patent titles

48. Arizona State Library,
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CLASSIFICATION
 Allows you to find
all of the patents in
a class together
 Three major
systems
CPC
 USPC
 Locarno

49. Arizona State Library,
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CPC
 Cooperative Patent Classification
System
 All U.S. patents issued from January
2015 CPC only
 Used for U.S. Patents from January
2013
 70-80% of world’s patents
 http://www.cooperativepatentclassificatio
n.org/

50. Arizona State Library,
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CPC
 Section: A to H + Y
 Class: 2 Digit number
 Subclass: Single letter
 Group: 1 to 3 Digit
Number
 Main Group: 2 digit
number
 Section: A
 Class: 45
 Subclass: B
 Group: 19
 Main Group:
06
 A45B 19/06

51. Arizona State Library,
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A45B 19/06
Section: A through H
A: Human Necessities
B: Operations and Transport
C: Chemistry and Metallurgy
D: Textiles
E: Fixed Constructions
F: Mechanical Engineering
G: Physics
H: Electricity
Y: Emerging Cross-Sectional Technologies
Umbrellas with telescopic ribs

52. Arizona State Library,
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A45B 19/06
Class: 2 digit number
 A44 Haberdashery; Jewelery
 A45 Hand or Travelling
Articles
 A46 Brushware
Umbrellas with telescopic ribs

53. Arizona State Library,
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A45B 19/06
Sub Class: 1 Letter
 A45B Walking Sticks; Umbrellas;
Ladies’ or Like Fans
 A45C Purses; Luggage; Hand Carried
Bags
 A45D Hairdressing or Shaving
Equipment; Manicuring or other
Cosmetic Treatment
Umbrellas with telescopic ribs

54. Arizona State Library,
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A45B 19/06
Group: 1 to 3 digit number
 A45B 17/00 Tiltable Umbrellas
 A45B 19/00 Special Folding or
Telescoping of Umbrellas
 A45B 21/00 Umbrellas
Convertible into Walking
Sticks
Umbrellas with telescopic ribs

55. Arizona State Library,
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A45B 19/06
Main Group or Sub Group: 2
digit number
 A45B 19/02 Inflatable
umbrellas; Umbrellas without
ribs
 A45B 19/04 With telescopic
sticks
 A45B 29/06 With telescopic
ribs
Umbrellas with telescopic ribs

56. Arizona State Library,
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A45B 19/06
US Pat. No. 7,913,709

57. Arizona State Library,
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CLASSIFICATION
USPC

58. Arizona State Library,
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USPC
 United States Patent Classification
System
 All U.S. patents issued from up to
January 2013
 Concurrent with CPC until January 2015
 Used for U.S. Design Patents
 Static (No new classes being added)
 http://www.uspto.gov/patents-application-
process/patent-search/classification-
standards-and-development

59. Arizona State Library,
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CLASSIFICATION
Locarno

60. Arizona State Library,
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LOCARNO
 Also known as the International Classification
of Industrial Designs
 Began 1968, now on the 10th edition
 32 classes, 219 subclasses
 Alphabetical list of 7157 goods
 Used by 53 states (June 2014)
 Hague Express database
 http://www.wipo.int/classifications/locarno/en/

61. Arizona State Library,
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RESOURCES FOR ASSISTANCE

62. Arizona State Library,
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PATENT PRO BONO PROGRAM
 Covers 49 states
 Administered through regional offices
 Attorney or agent will draft and prosecute
your patent at no charge (USPTO fees still
apply)
 http://www.uspto.gov/patents-getting-
started/using-legal-services/pro-
bono/inventors
 http://www.calawyersforthearts.org/CIAP

63. Arizona State Library,
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PATENT LAW CLINIC
 Lisa Foundation Patent Law Clinic
 Law students (under faculty supervision)
 https://www.law.asu.edu/clinics/TheClinicalPr
ogram/LisaFoundationPatentLawClinic.aspx

64. Arizona State Library,
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PRO SE ASSISTANCE PROGRAM
 Does not provide legal advice or draft your
patent
 Dedicated personnel for assisting pro se
applicants
 In-person assistance for the general public at
USPTO Headquarters
 Targeted support to connect applicants with
relevant resources and information
 http://www.uspto.gov/patents-getting-
started/using-legal-services/pro-se-assistance-
program

65. Arizona State Library,
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TIPS FOR WORKING WITH AN ATTORNEY

66. Arizona State Library,
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WORKING WITH AN ATTORNEY
 How many patents have you
prosecuted?
 What are the estimated costs?
 How will you keep me
informed?
 Do you have references?
 http://www.uspto.gov/ip/boards/
oed/practitioner/agents/index.js
p

67. Arizona State Library,
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WORKING WITH AN ATTORNEY
 Can search issued
patents by attorney,
agent or firm
 Link on the
advanced search
page of PatFT for
how to structure
 May be under
individual’s or firm’s
name (or both)

68. Arizona State Library,
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QUESTIONS?