1. Business Roundtable: Patents & Trademarks Friday, October 28, 10 – 11:30am, Trumbull Main Library Community Room Robert Berry, Research Librarian, PTRC Representative, Ryan-Matura Library, Sacred Heart University 5151 Park Avenue, Fairfield CT, 06825 berryr@sacredheart.eduberryr@sacredheart.edu (203) 365-4842

2. United States Patent & Trademark Office Approximately 9,000 employees The USPTO campus in Alexandria, Va. Congress authorizes the USPTO to examine applications for Patents and Trademarks. The Copyright Office (http://www.copyright.gov/) manages copyrights, the third major form of Intellectual Property.Copyright Office [United States Patent & Trademark Office, “Mission and Organization of the USPTO,” http://www.uspto.gov/web/offices/com/annual/20 07/30100_mission_org.html http://www.uspto.gov/web/offices/com/annual/20 07/30100_mission_org.html

3. The USPTO’s PTRC ProgramPTRC The program began in 1871 to create depositaries for government publications. Today PTRCs assist the public in using of patent and trademark information resources efficiently. PTRCs Provide free access to patent and trademark resources provided by the United States Patent and Trademark Office. [United States Patent & Trademark Office, PTRCs, at http://www.uspto.gov/products/library/ptdl/index. jsp ] http://www.uspto.gov/products/library/ptdl/index. jsp

4. 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.

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) Doris Ulmann, Albert Einstein (1931) Prints & photographs, PR 13 CN 1975:127]

8. What can PTRCs do? Assist People in Understanding how to Conduct a Preliminary Patent Search. Assist People in Locating the up-to-date Resources. Provide Access to PubWest for Advanced Searchers.

9. What can PTRCs not do? Filing a patent application is initiating a legal proceeding, accordingly: PTRC’s cannot File a Patent Application for you or Opine on the Adequacy of an Application. PTRC’s cannot Conduct a Search of Prior Art for you or Opine on the Adequacy of your Search.

10. PTRCs also Provide Access to PubWest

11. Why Undertake a Preliminary Search of USPTO Databases?USPTO Databases Inventors can avoid pursuing existing inventions and be better prepared to consult with a patent agent or patent attorney. Entrepreneurs can avoid infringement, monitor technical developments, and identity licensing opportunities. [PTDLP, “Ho 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

12. Patent Searching can be done using the U.S. Patent Classification System

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

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

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

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

17. 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/

18. Seven Step Strategy

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

20. 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.

21. Trademarks A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of goods. A service mark identifies and distinguishes the source of a service or services.

22. The USPTO may refuse to register a Trademark or Service Mark for many reasons, including: Likelihood of Confusion see, e.g., Mini Melts, Inc. v. Reckitt Benckiser, Inc., 418 Fed. Appx. 271 (5 th Cir. 2011). Merely Descriptive. Deceptively Misdescriptive. Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive. Primarily Merely a Surname.

23. While Trademarks Enjoy Protection under Common Law, there are Advantages to Registering Public notice of your claim of ownership of the mark; A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration; The ability to bring an action concerning the mark in federal court; The use of the U.S. registration as a basis to obtain registration in foreign countries; The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; The right to use the federal registration symbol ® and Listing in the United States Patent and Trademark Office’s online databases. USPTO, “Trademark FAQS, http://www.uspto.gov/faq/trademarks.jsp#_Toc275426681 http://www.uspto.gov/faq/trademarks.jsp#_Toc275426681

24. Trademarks are Registered with the USPTO Pursuant to the Lanham Act The Lanham Act or Trademark Act of 1946, 60 Stat. 427, as amended, 15 U.S.C. § 1051 et seq., provides the user of a trade or service mark with the opportunity to register it with the PTO If the registrant then satisfies further conditions including continuous use for five consecutive years, “the right... to use such registered mark in commerce” to designate the origin of the goods specified in the registration “shall be incontestable” outside certain listed exceptions. 15 U.S.C. § 1065.

25. Trademark Searching can be Done using a Classification System for Designs “USPTO assigns all marks containing design figurative elements a 6-digit numerical code(s) for searching purposes. This manual indexes the categories, divisions, and sections that make up these codes.” “For example, a single five-pointed star would be coded in: Category 01 (celestial bodies, natural phenomena and geographical maps); Division 01 (stars, comets); and section 03 (single star with five points), resulting in a complete design code of 01.01.03.” [USPTO, Trademarks, Manuals, Guides, Official Gazette, http://www.uspto.gov/trademarks/reso urces/index.jsp]

26. Once you Determine the Design Classification Code, you can Search using that Number. For example Bees fall under 03.23.06: 03 Animals,.23 Insects, spiders, micro-organisms, and.06 Bees, wasps, hornets.

27. We can Scroll through Results for marks with a Bee in them and Names like The Buzz Ladies and Shopbee

28. A Record for a Trademark or Service Mark may have more than one Code Associated with it: 02.09.04 - Humans, including men, women and children, depicted sitting or kneeling; Kneeling, humans; Sitting, humans 03.23.06 - Bees; Hornets; Wasp; Yellowjackets 09.03.25 - Bath robes; Costumes (Halloween or masquerade); Jump suits; Kimonos; Leotards; Robes; Surgical gowns; Suspenders (clothing); Uniforms; Vestments

29. Contact Information Rob Berry berryr@sacredheart.edu 203-365- 4842 Reference Desk reference@sacredheart.edu 203-371-7726berryr@sacredheart.edureference@sacredheart.edu