1. Small Business Strategies Series: Patents & Trademarks Sponsored by Fairfield Public Library & The Greater Bridgeport Chapter of SCORE Thursday, November 14, 7:00 pm, Fairfield Public Library Robert Berry, PTRC Representative Ryan-Matura Library, Sacred Heart University 5151 Park Avenue, Fairfield CT, 06825

2. The Constitution Empowers Congress to pass laws Regulating Commerce, Copyrights and Patents 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. Design Patents, Plant Patents, & Utility Patents

9. Our Sample Patent is for a Post Hole Digger

10. 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.

11. INID Codes, Patent Number, & Issue Date

12. Title of the Invention, Inventor and Assignee Information, & Applicant Information.

13. Domestic & International Classifications. Field of Search

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

15. 294/50.8 Class 294 HANDLING: HAND AND HOIST-LINE IMPLEMENTS This class comprises all devices combined with handles, terminal elements, or attachments peculiarly adapted for engaging supporting articles or materials for handling or manipulating purposes and not structurally limited to any classified art and such combinations thereof and accessories therefor as not elsewhere classifiable. Subclass 50.8 With movable cooperating load- engaging member This subclass is indented under subclass 50.6. Implements wherein a movable member cooperates with the fork or shovel to grip the load. The member may be another fork or shovel blade.

16. Make sure to Examine the Classifications Definitions Carefully Class 294 HANDLING: HAND AND HOIST-LINE IMPLEMENTS Subclass 49 HAND FORKS AND SHOVELS This subclass is indented under the class definition. Hand implements comprising a stem or handle fitted at one end with a blade or row of tines extending in the general direction of the handle and designed to engage and lift a load usually when held in approximately horizontal position. (1) Note. Hand implements constructed with a bottom, three sides and an open fourth side and used like scoops, have been placed elsewhere (….) Subclass 50.6 Grappling Type This subclass is indented under subclass 49. Implements peculiarly adapted to grasp, grapple or otherwise retain a load in or on the fork or shovel. Subclass 50.8 With movable cooperating load-engaging member

17. Information Related to the Prosecution of the Patent such as Fields of Search, References Cited, Examiner, Inventor’s Patent Attorney

18. Abstract and Drawings

19. Specification and Claims

20. 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

21. 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.

22. 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 loose right to use it.

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

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

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

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

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

28. 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/

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

30. 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.

31. PTRCs also Provide Access to PubWest

32. Seven Step Strategy

33. Trademarks

34. Trademarks > Manuals, Guides, Official Gazette > Design Search Code Manual http://www.uspto.gov/trademarks/resources/index.jsp

35. 08 Foodstuff This category includes goods that are edible such as meat, dairy products, sandwiches, and baked goods. It does not include fruits and vegetables.

36. Trademarks > Trademark Electronic Search System (TESS) http://tess2.uspto.gov

37. The Result Set is Linked to Records

38. Vinzee’s Record in TESS

39. Additional References Excerpt from Farrand’s Records, Wednesday September 5, 1787. Harris & Ewing Photographers, “Patent Office employee pointing to copies of first patent granted after 1836 when patent laws were rewritten,” (ca 1940) LOC PPOC LC-H22-D- 8620 [P&P] Vinzee’s, 412 Court St., Brooklyn NY 11231.

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