The document is a presentation about patent basics given by Peter Grant, a librarian. It covers types of intellectual property including patents, trademarks, copyrights and trade secrets. It defines these concepts and provides examples. It discusses the three types of patents - utility patents, design patents, and plant patents. It also covers provisional patent applications, patent costs, the patent process, filing strategies, and free search tools on the USPTO website like APPFT, PATFT, and PAIR.

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 2016

2. Arizona State Library,
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Records
OUTLINE
 Types of intellectual property
 Requirements for patentability
 3 types of patents
 Provisional applications
 What it costs
 Steps
 Search
 Sources for free help
 Tips for working with an attorney or agent

3. Arizona State Library,
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INTELLECTUAL PROPERTY
 Four basic types:
 Trademarks
 Copyrights
 Trade Secrets
 Patents

4. Arizona State Library,
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TRADEMARKS

5. Arizona State Library,
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WHAT IS A TRADEMARK?
 A trademark or service mark includes any word,
name, symbol, device, or any combination, used
or intended to be used to identify and
distinguish the goods/services of one seller or
provider from those of others, and to indicate
the source of the goods/services.
 Lanham Act (Trademark Act of 1946). Passed
by Congress on July 5, 1946. Took effect July 5,
1947

6. Arizona State Library,
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WHAT IS A TRADEMARK?

7. Arizona State Library,
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COPYRIGHT

8. Arizona State Library,
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WHAT IS A COPYRIGHT?
 “Copyright is a form of protection provided to the
authors of "original works of authorship" including
literary, dramatic, musical, artistic, and certain other
intellectual works, both published and unpublished.”
 “The copyright protects the form of expression rather
than the subject matter of the writing.”
 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.”

9. Arizona State Library,
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WHAT IS A COPYRIGHT?
Sonnett Number 18
William Shakespeare
Shall I compare thee to a summer's day?
Thou art more lovely and more temperate:
Rough winds do shake the darling buds of
May,
And summer's lease hath all too short a date:
Sometime too hot the eye of heaven shines,
And often is his gold complexion dimmed,
And every fair from fair sometime declines,
By chance, or nature's changing course
untrimmed:
But thy eternal summer shall not fade,
Nor lose possession of that fair thou ow'st,
Nor shall death brag thou wander'st in his
shade,
When in eternal lines to time thou grow'st,
So long as men can breathe, or eyes can see,
So long lives this, and this gives life to thee.

10. Arizona State Library,
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TRADE SECRETS

11. Arizona State Library,
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WHAT IS A TRADE SECRET?
 “all forms and types of financial, business, scientific, technical, economic, or
engineering information, including patterns, plans, compilations, program
devices, formulas, designs, prototypes, methods, techniques, processes,
procedures, programs, or codes, whether tangible or intangible, and whether or
how stored, compiled, or memorialized physically, electronically, graphically,
photographically, or in writing if—
 (A) the owner thereof has taken reasonable measures to keep such information
secret; and
 (B) the information derives independent economic value, actual or potential,
from not being generally known to, and not being readily ascertainable through
proper means by, the another person who can obtain economic value from the
disclosure or use of the information.”
 Defend Trade Secrets Act of 2016

12. Arizona State Library,
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WHAT IS A TRADE SECRET?

13. Arizona State Library,
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PATENTS

14. 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.”

15. Arizona State Library,
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WHAT DOES A PATENT COVER?
“…any new and useful process,
machine, article of manufacture, or
composition of matter, or any new
and useful improvement thereof…”

16. 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

17. 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.”

18. 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.”

19. 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)

20. 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”

21. 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

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3 TYPES OF PATENTS

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3 TYPES OF PATENTS
Utility Design Plant

24. 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

25. 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

26. 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

27. 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

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PROVISIONAL
Not a type of patent, a type of application

29. 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

30. 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.

31. 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

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

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

34. Arizona State Library,
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USPTO FEE SCHEDULE

35. 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 ($15420) $3700 $1850 ($3790)

36. 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. *2014 Median household income: $53,657
(Reported by U.S. Census, September
2015)

37. 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

38. Arizona State Library,
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WHAT’S THE DIFFERENCE?
ATTORNEYS AGENTS
*USPTO June, 2016
33,354* 11,103*
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

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

40. 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
http://www.uspto.gov/patents-getting-
started/patent-process-overview#step1
http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/utility-patent/patent-process-0

41. Arizona State Library,
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FILING STRATEGIES

42. Arizona State Library,
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FILING STRATEGIES
 Faster Examinations - USPTO
 Petition to make special: Age and Health
 Prioritized Examination
 Accelerated Examination
 Expedited Examination of a Design

43. Arizona State Library,
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FILING STRATEGIES
Prioritized
Examination
Accelerated
Examination
Expedited
Examination of a
Design
Placed ahead of
other filings
Ahead of other
filings and faster
examination
process
Ahead of other
filings and faster
examination
process
No pre-exam
search
Pre-examination
search required
Pre-examination
search required
Non-provisional
Utility only
Non-provisional
Utility only
Design

44. Arizona State Library,
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FILING STRATEGIES
 Foreign Filings
 PCT Application
 Common application for 148 countries
 Where do you plan to make it?
 Where do you plan to sell it?

45. Arizona State Library,
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SEARCH

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

47. Arizona State Library,
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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

48. Arizona State Library,
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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

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

50. Arizona State Library,
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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

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

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

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

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

55. 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

56. Arizona State Library,
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SEARCH
Patent Classification

57. Arizona State Library,
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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

58. 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

59. 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

60. Arizona State Library,
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CLASSIFICATION
CPC

61. Arizona State Library,
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CPC
 Cooperative Patent Classification
System
 All U.S. utility patents issued from
January 2015 CPC only
 Used for U.S. Patents from January
2013
 85% of world’s patents
 http://www.cooperativepatentclassificatio
n.org/

62. Arizona State Library,
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CLASSIFICATION
USPC

63. Arizona State Library,
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USPC
 United States Patent Classification
System
 All U.S. patents issued 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

64. Arizona State Library,
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CLASSIFICATION
Locarno

65. 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 countries (June 2014)
 Hague Express database
 http://www.wipo.int/classifications/locarno/en/

66. Arizona State Library,
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LIVE USPTO DATABASE DEMO
http://www.uspto.gov/

67. Arizona State Library,
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RESOURCES FOR ASSISTANCE

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PATENT PRO BONO PROGRAM
 Covers all 50 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

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

70. 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

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

72. 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

73. 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)

74. Arizona State Library,
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QUESTIONS?