New Product Development : Preliminary Patent Research on the USPTO Website

1. New Product Development: Preliminary Patent Research on the USPTO Website Suzanne L. Reinman ,MILS Government Information Specialist Oklahoma State University 501 Edmon Low Library (405) 744-6546, suzanne.reinman@okstate.edu www.library.okstate.edu/patents/

2. You have a new product, technology, service(or an idea for one) akaNew Venture Creation • What are your first steps?

3. Starting a Business • Startup:SEARCH to see if your invention or product already exists • and potentially protect your ideas(intellectual property) • Planning (business plan) • Financing • Marketing • Employees • Taxes • Legal aspects

4. Intellectual Property • Property that can be protected under federal law and bought or sold • Patents • Trademarks • Copyrights • Section 8 of Article 1 of the U.S. Constitution: • “Congress shall have Power To promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors exclusive Right to their respective Writings and Discoveries”

5. Protection vs. ‘practical’ Intellectual property (protection from the government issued on paper) vs. Business plan, financing, production, marketing

6. This workshop will: • Assist you with a preliminary U.S. patent search via the U.S. Patent and Trademark Office website: http://www.uspto.gov/ • Visit with a registered patent attorney for a professional search and potential submission of a patent application • Visit with a Small Business Development Center, etc.

7. Search Patent Literature • To see if a product has already been developed • For ideas to improve existing research • For new areas of research • USPTO • ESPACENET: European Patent Office

8. Preliminary Patent Research • Search at no charge to determine if an invention/research has already been patented—lessen need to proceed through the long, expensive patent process. (There are 7,500,000+ U.S. patents) • Even if you don’t decide to take the route of a patent, you still need to determine if your invention is patented by someone else before you can produce and market it

9. Preliminary Patent Research • Just because it’s not on the shelves at Walmart doesn’t mean an item hasn’t been patented or doesn’t exist (there are 7,500,000 U.S. patents) • 4% of what is patented enters commerce as a product or service • Patents are a key source of technical information not included in traditional literature searches, etc.

10. Search Using U.S. Classifications • Searching U.S. Classifications(470 subject categories) is critical to a good preliminary search • Keyword searching will yield incomplete results (USPTO or elsewhere)

11. Google Patents? • Google Patents • http://www.google.com/patents • Use to identify one or two relevant patents • Offers keyword searching to ‘1776’ versus 1976 (USPTO) • FreePatentsOnline • http://www.freepatentsonline.com/ **Fine for keyword searches, but not in-depth preliminary research**

12. Search U.S. Trademarks • To see if a name or logo for a company, good, or service is in use • USPTO

13. Preliminary v. Professional • A search done on the USPTO website for U.S. patents or trademarks is a PRELIMINARY search (does not include other countries, etc.) • Searching is complex and time consuming • Before applying for a patent or trademark, contact a patent attorney to have a professional search done (and the application)

14. The Patent and Trademark Library at OSU • Part of the USPTO’s Patent and Trademark Depository Library Program: a nationwide network of 84 libraries set up to disseminate patent and trademark information and assist with preliminary U.S. patent and trademark research

15. The Patent and Trademark Library at OSU • http://www.library.okstate.edu/patents/ • 501 Edmon Low Library • (405) 744-6546 • Call to make an appointment • Have a complete understanding of how your invention works

16. Our Resources • Trained staff to assist you with the preliminary search process • Workstations to access full-text of U.S. patents and trademarks via U.S. Patent and Trademark Office Web site • Advanced search software from U.S. Patent and Trademark Office

17. What is a Patent? (U.S.) • Provision in Title 35 of the United States Code (U.S. Law) • Must be a new and useful machine, item of manufacture or composition • Must be non-obvious, and reproducible by one skilled in the art • Patent grants the right to exclude others from making, using, or selling an invention for a period of time, but it is publicly disclosed • Three types of patents: utility, design, and plant

18. What cannot be patented? • An idea: inventions must be reducible to practice • Laws of nature/naturally occurring articles • Scientific principles • Methods of doing business • Exceptions: software and Internet methods of doing business

19. Utility Patents • What we think of as a “patent” • Protect how the item WORKS • Legal language defines the actual parameters of the protection • Length of protection is 20 years from date of file, provided maintenance fees are paid • Applications are published 18 months after filing (American Inventors Protection Act AIPA)

20. Potential Utility Patents: • Chemical compositions: toothpaste • Articles of manufacture: tennis ball • Machines: drill • Processes: “Data storage array method and system”

21. Stephen McKeever, OSU Physics Dept. Assigned to the OSU Board of Regents Current U.S. Class: 250/459.1; 250/484.5 A bimodal method for determining an unknown absorbed dose of radiation. An irradiated material is illuminated with ultraviolet or visible light and the luminescence which is emitted from the material is detected. The illuminating light is pulsed, with pulse widths varying from 1 ns to 500 ms. The luminescence emission from dosimetric traps is monitored after a delay following the end of the illuminationpulse.

22. Design & Plant Patents • Design patents protect how the item LOOKS • Less expensive to obtain, protect for 14 years • Plant patents protect a variety of plant such as roses, begonias, etc.

25. Patents Worldwide • Most industrialized countries offer inventors protection in the form of a patent. Standards vary from country to country • If an invention has been patented in one country, it cannot be patented in another: it has already been patented in the “world” • There are international treaties that allow U.S. inventors to obtain patent protection in other countries if they take certain required steps (See WIPO,http://www.wipo.org/)

26. Foreign Patents • Search foreign patents via the European Union site • http://ep.espacenet.com/ • Search using the international classification found on a U.S. patent • Coverage varies by country • Not a complete search

28. Search Worldwide Patents: Espacenet via European Patent Office * * * *

29. Do you need a patent? • Patents: • Are a bureaucratic, complicated venture • Are expensive: average cost $8,000-$15,000 and up (U.S.) • Need assistance from a patent attorney to be successful • Take a while to issue: from the date of filing, 1.5 to 2 years

30. Do you need a patent? • Patents: • Are a bureaucratic, complicated venture • Are expensive: average cost $8,000-$15,000 and up (U.S.) • Need assistance from a patent attorney to be successful • Take a while to issue: from the date of filing, 1.5 to 2 years

32. What is a Federally Registered Trademark? Provision in Title 15 of the United States Code Word, name, symbol or device that identifies the good/services of one entity from goods/services of another in interstate commerce Owners of marks may seek federal registration because of procedural and legal advantages over state and common law trademark protection (a state trademark protects you in that state only) Protection is indefinite, if fees are paid ® symbol is for a registered mark. “Tm” and “Sm” indicate a pending or unregistered Good and Service.

35. Copyright • Provision in Title 17 of the United States Code • Protection for creative expression, not the facts • Automatic protection is given to printed works, software, artwork, photo, video, software and practically everything on the Internet, once “fixed in any tangible medium of expression” but register for more protection ($45 fee) • Duration of protection runs the life of the author, plus 70 years • See the U.S. Copyright Office at the Library of Congresshttp://www.copyright.gov/

36. Trade Secrets • Patents are published, and eventually protection runs out • If something is so essential to a company’s business that they don’t want anyone else ever to be able to use it, they keep it as a trade secret and do not disclose it • Examples: the formula for Coca-Cola

37. USPTO Website • http://www.uspto.gov/ • Basic information about patents and the patent process • Search issued and pending patents • How to apply for a patent • Fees and payments (see Patent Assistance Center). (The basic filing fee for a utility patent is $500.) • File and check status (attorneys) • See also Nolo Press’s title: Patent It Yourself, available at the Library or via http://www.nolo.com/

39. Searching U.S. Patents on the USPTO Site • The complete images of all patents (back to 1790) are available online ONLY if searching by class/subclass. • Searching by keyword will ONLY retrieve patents back to 1976 (also inventor, assignee, etc.) • Site is updated daily • The full-text of a patent will include “drawings” or “pictures.” • USPTO requires that the AlternaTiff plug-in be installed to see drawings (TIFF format) http://www.alternatiff.com/

40. U.S. and International Classification Systems • U.S. and an international classification systems classify patents by technology groups • Noted on the first page of a patent • It is important to determine the appropriate classes/subclasses for your invention and to examine all of the patents in those classes/subclasses

41. There are 470+ U.S. ClassesFind classes applicable to your product/research

42. Each subclass within the class contains a list of issued patents Each subclass meets certain criteria depending on the hierarchy

43. To determine where your invention/research fits in the 470 classes • Start with a keyword search • Locate applicable patents • Examine their classifications • Search these classifications

44. Steps to Starting a Patent Search • 1. Start at Google Patents http://www.google.com/patents • 2. Click on Advanced Search • 3. Think of words that describe your research/invention and type these in the first box: “with all the words” • 4. Look through the list of patents retrieved and locate a patent that is in your area of research • 5. Click on it and then click on “View Patent at USPTO” • 6. Note the classes/subclasses on this patent • 7. Plug these in at USPTOhttp://www.uspto.gov/go/classification • 8. Click on the red ‘P’ to examine all patents in those classifications • 9. Click on the blue ‘A’ to view applications in those classifications • 10. Can also search by Inventor, Location, Date, etc. • For international patents search Espacenet http://ep.espacenet.com/

45. A motorized or automated shade system for an automobile • Example keywords • automatic sun shade vehicle

46. Google Patents Advanced Search

47. 4. Look through the list of patents retrieved

49. Click here for official U.S. patent with images

50. This is page one of patent no. 6,666,493: Automatic Sun Visor and Solar Shade System for Vehicles Use Current U.S. Classes noted in a patent and go back and do a thorough class/subclass search: 296/97.4 296/97.8