1. Trumbull Library System, Business Program: Patents & Business Intelligence Thursday, November 10, 6:30 pm, Trumbull Main Library Amy Jansen, Business Librarian Robert Berry, PTRC Representative Ryan-Matura Library, Sacred Heart University 5151 Park Avenue, Fairfield CT, 06825

2. The Granting of Patents is Authorized and Regulated under Federal Law U.S. C ONST. art I, § 8, cl. 8 grant to Congress the power to “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.” Federal laws pertaining to Patents are codified in Title 35 of the United States.

3. The Public Policy Patent Law affords a Limited Monopoly on an Invention (currently 20 years under 35 U.S.C. §154(a)(2)). The Patent must contain a specification that would enable a person skilled in the art to which it pertains... to make and use the same.” 35 U.S.C. §112. The Patent must contain one or more claims “distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. §112.

4. In 1836 the United States Adopted a System of Patent Examination Inventors Typically draft Broad Claims which may be Narrowed during the Examining Procedure. The Manner in which a Patent is Drafted can Substantially Impact its Value. [United States Patent & Trademark Office, “Mission and Organization of the USPTO,” http://www.uspto.gov/web/offices/com/annu al/2007/30100_mission_org.html ] http://www.uspto.gov/web/offices/com/annu al/2007/30100_mission_org.html

5. 35 U.S.C. § 101 (Inventions patentable) defines the scope of “patentability”. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Thus, to be patentable, claims must be (1) new, (2) useful and (3) non-obvious. [USPTO MPEP at § 2106 http://www.uspto.gov/web/offices/pac/mpep/mpep_e 8r6_2100.pdf] http://www.uspto.gov/web/offices/pac/mpep/mpep_e 8r6_2100.pdf

6. To Determine if a Claimed Invention is New a Patent Examiner Searches “Prior Art.” Prior Art refers to all information that has been published concerning the relevant Scientific and Technological principles claimed. It is much more comprehensive than a Preliminary Search.

7. Things that cannot be Patented include: Laws of nature (such as E=mc 2 or Newton’s Law of Gravity). Physical Phenomena (such as a newly discovered mineral or plant). Abstract Ideas (such as concepts related to hedging risk reduced to a mathematical formula). [Diamond v Chakrabarty, 447 U.S. 303, 309 (1980); Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010) William Thomas Fry, Sir Isaac Newton, ob. 1727 (1820-1850) LOC Prints & photographs, BIOG FILE - Newton, Isaac, Sir [P&P]]

8. A Preliminary Search of USPTO Databases Typically Relies on the Patent Classification SystemUSPTO Databases Because Patents often are Drafted using Technical Terms, A Classification Search is often more Effective than Searching for Terms. Inventors might undertake preliminary searches to avoid pursuing existing inventions and be better prepared to consult with a patent agent or patent attorney. Entrepreneurs might undertake preliminary searches to avoid infringement, monitor technical developments, and identity licensing opportunities. [PTDLP, “How to Conduct a Preliminary U.S. Patent Search,” http://www.uspto.gov/web/offices/ac/ido/ptdl/CBT ] http://www.uspto.gov/web/offices/ac/ido/ptdl/CBT

9. Components of a Patent Include: INID (International Agreed Numbers for the Identification of Bibliographic Data) Codes. US Patent Number. Issue Date. Title of the Invention. Inventor and Assignee Information. Applicant Information. Domestic and International Classifications. Fields of Search and References Cited Abstract. Drawings. Specification. Claims.

10. Patents > Patent Classification > Search Classification System http://www.uspto.gov/web/patents/classification/

11. 37/257 Class 37 Excavating This class relates to the broad art of digging, moving, and handling material. This class includes method or apparatus for the removal of a tree, stone, soil, or snow from an in situ location, either on the earth’s surface or beneath a body of water. Subclass 257 Screw Type Auger This subclass is indented under subclass 244. Apparatus wherein the implement comprises a helical vane means arranged to rotate upon its axis.

12. Subclass 257 is related to Subclass 244, which is in turn related to Subclass 196

13. Factors that Affect the Value of a Patent Include Scope of Protections. Whether Patent Impacts Core Competencies of a Business of Industry. Ability of Company to Detect and Prosecute Infringement. Ability of a Company to Integrate Patent into Research and Development.

14. The America Invents Act Changes System from a “First to Invent” to “First to File” System for patents filed on or after March 16, 2013. Companies that are not Vigilant in Patenting technology can lose right to use it.

15. The USPTO provides the basic Resources to Conduct a Preliminary Search using the U.S. Patent Classification System

16. You can locate Applications and Patents by Clicking on the Blue or Red Icons

17. Note that Seesaws are in Class 472, Amusement Devises

18. We can use the Patent Quick Search to Search by Class and Subclass Numbers

19. One of 97 Seesaw Patents our Search Retrieved is Patent No. 3,666,265 Water Seesaw Device

20. Business Intelligence & Patents Patents are crucial pieces in business & competitive intelligence in 21 st century. Having the right patents & knowing how to use them can “make or break” companies. Companies’ R & D (research & development) and patent spending are more important than ever. O’Haver, R. Monetize Your Intellectual Property. Mercer Management Journal, Vol. 16, 2004.

21. From http://spectrum.ieee.org/at-work/innovation/patent-prowesshttp://spectrum.ieee.org/at-work/innovation/patent-prowess Understand the Value of Patents Knowing the value of a company’s patent portfolio is key. There are many resources for evaluating companies & their patent portfolios now.

22. Know Your Competitors Start your research in a library business database You can find the Business & Company Resource Center database here at the Trumbull Public Library system Business & Company Resource Center Trumbull Public Library

23. Industry Descriptions, Codes, and Identifying Competitors Some business databases neatly pull together competitor lists In other databases, you may need to locate the industry description or SIC/NAICS code of your target company and then find other companies with matching industry descriptions

24. Patents as Company Assets Independent of company tangibles. Can be bought, sold, used as collateral. Patents as source of revenue & defense. Investors have a real and growing interest in patent portfolios. From Bloomberg Businessweek, March 24, 2010, http://www.businessweek.com/blogs/personal_finance/archives/2010/03/patents.html (Trademarks!)

25. Patents as Investments Why are patents an investment for companies? Competitors must buy license(s) to design products based on your patents. If not willing to buy, competitors must “design around” patent. Other competitors who do not buy licenses or design around may risk an infringement suit, an expensive & lengthy process.

26. Understanding Patent Citations What is a patent citation? Reference to prior technology, upon which current patent is built or uses Some added by inventors, others by examiners Some added to avoid infringement actions

27. Importance of Patent Citations Patents cited by many later patents tend to contain important ideas upon which later inventors are building. A company with a large number of cited patents is likely to possess technology that is central to developments in its industry.

28. **The patent citation index reflects how often the company's patents filed over the past five years have been cited as a basis for other innovation. The number is calculated by adding, for all patents filed between 2001 and 2005, the number of times each patent or application has been cited or mentioned by other patents up until December 31, 2006. We then adjusted the citation counts for patent age, since older patents have a greater likelihood of being cited than more recent ones. The age- adjusted counts were then indexed to a linear scale. From Bloomberg Businessweek, Mon. Nov. 7, 2011, http://www.businessweek.com/interactive_reports/most_innovative.htmlhttp://www.businessweek.com/interactive_reports/most_innovative.html The World's 50 Most Innovative Companies, ranked according to patent citation index

29. Why is it worth doing a patent citation analysis? Many studies have revealed a link between citations & technical importance of patents. Other studies show a connection between patent citations & stock valuations. Strong ties between patents and scientific literature are important in biotechnology & pharmaceutical industries.

30. USEFUL RESOURCES (There are Several Useful Resources on the USPTO Website to get you Started) Seven Step Strategy Inventors Assistance Center (IAC) Inventors Assistance Center (IAC) Patent Attorneys and Agents Registered to Practice before the USPTO Patent Attorneys and Agents Registered to Practice before the USPTO Plugins - TIFF images Manual of Patent Examining Procedure (MPEP) Manual of Patent Examining Procedure (MPEP) How to Conduct a Preliminary U.S. Patent Search How to Conduct a Preliminary U.S. Patent Search [USPTO, “How to Conduct a Preliminary U.S. Patent Search,” http://www.uspto.gov/web/offices/ac/ido/ptdl/CB T/] http://www.uspto.gov/web/offices/ac/ido/ptdl/CB T/

31. Seven Step Strategy

32. Patent Attorneys and Agents Registered to Practice before the USPTO

33. Inventors Assistance Center (IAC) Answer general questions regarding patent examining policy. Direct your call to appropriate USPTO personnel. Assist you with filling out forms. Provide general information concerning rules, procedures, and fees. Send information via mail or facsimile.

34. PTRCs also Provide Access to PubWest

35. Additional References & Further Reading [Henry R. Robinson, “Thomas Jefferson, Third President of the United States,” (1840-1851) LOC PPOC PGA - Robinson (H.)--Thomas Jefferson... (A size) [P&P]] Blair, R. D., & Cotter, T. F. (2005). Intellectual property: Economic and legal dimensions of rights and remedies. Cambridge ; New York: Cambridge University Press. Choate, P. (2005). Hot property: The stealing of ideas in an age of globalization (1st ed.). New York: Knopf. Goldstein, P. (2007). Intellectual property: The tough new realities that could make or break your business. New York: Portfolio. Hall, B. H., Jaffe, A., & Trajtenberg, M. (2005). Market value and patent citations. The Rand Journal of Economics, 36(1), pp. 16-38. Stahl, L. A., & Fischer, R. H. (2010). The value of patents to technology driven companies. Intellectual Property & Technology Law Journal, 22(12), 27-30. Su, F., Lai, K., Sharma, R., & Kuo, T. (2009). Patent priority network: Linking patent portfolio to strategic goals. Journal of the American Society for Information Science and Technology, 60(11), 2353. Wolff, T., & Adams, S. (2010). Patents in the realm of independent information professionals. Bulletin of the American Society for Information Science and Technology (Online), 37(1), 17.

36. Contact Information Amy Jansen Jansena@sacredheart.eduJansena@sacredheart.edu 203-365-4818 Rob Berry berryr@sacredheart.eduberryr@sacredheart.edu 203-365-4842 Reference Desk reference@sacredheart.edu 203-371-7726reference@sacredheart.edu