1. New Product Development: The Basics.. and Preliminary Patent Research on the USPTO Web Site Suzanne L. Holcombe, MILS Government Information Specialist OSU, 501 Edmon Low Library (405) 744-7086, lib-ped@okstate.edu www.library.okstate.edu/patents/

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

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

4. Intellectual Property Property that can be protected under federal law.  Patents  Trademarks  Copyrights

5. Why are we talking about Intellectual Property? (patents, trademarks, copyrights, trade secrets) When you have an invention or new research: Check patent literature: To see if a product has already been developed For ideas to improve existing research For new areas of research

6. IP: Patents Patents reveal solutions to technical problems, and they represent an inexhaustible source of information: More than 80 percent of all technical knowledge is described in patent literature

7. Why are we talking about Intellectual Property? (patents, trademarks, copyrights, trade secrets) When you have an invention or new research: Check trademarks: To see if a name or logo for a company, good or service is in use

8. Preliminary Patent, Trademark Research Do a preliminary check of U.S. patents and trademarks to see if your invention or name already exists in the U.S. via the U.S. Patent and Trademark Office Web site http://www.uspto.gov/ 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 v. Professional A search done on the USPTO Web site for U.S. patents or trademarks is a PRELIMINARY search (does not include other countries, etc.) Before applying for a patent or trademark, contact a patent attorney to have a professional search done.

10. 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 support the intellectual property needs of the public. We are located on the 5 th floor of the OSU Library and we have a Web site. Call to make an appointment for assistance with a preliminary U.S. patent or trademark search.

11. Intellectual Property (IP) In 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” Four main forms of IP: Patents, Trademarks, Copyrights, Trade Secrets Actual forms of property which can be bought, sold, etc.

12. 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

13. 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

14. 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)

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

17. Stephen McKeever, OSU Physics Dept. Assigned to the OSU Board of Regents 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 illumination pulse. Current U.S. Class: 250/459.1; 250/484.5

18. 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.

23. 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/).http://www.wipo.org/

25. Search Worldwide Patents: Espacenet via European Patent Office

26. 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

27. Do you need a patent? Depending on the nature of the invention, it maybe be more desirable to start producing and selling the product without a patent. Patent searches are still necessary however. Or file a Provisional Patent. Consult with an attorney, Small Business Adminstration branch office, weigh the pros and cons.

29. Trademarks and Copyright Check Trademarks to see if a name or logo for a good or service is in use in the U.S. Copyright will give protection to creative expression in the form of literary works, performing arts, sound recordings, visual arts, software

30. 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 Protection is indefinite, if fees are paid See http://www.uspto.gov/http://www.uspto.gov/ ® symbol is a registered mark. “Tm” and “Sm” indicate an unregistered Good and Service.

32. State & Common Law Trademarks State protection available if doing business in one state only  Apply to the Secretary of State of the state Common law protection available for a limited region  Rights afforded when you start using the mark in commerce

33. Trademark Resources USPTO Trademark Web site http://www.uspto.gov/main/trademarks.htm Search the trademark database (TESS) or file a trademark application online http://www.uspto.gov/main/trademarks.htm State Trademark Agencies Online http://statetm.tripod.com/ Links to the agencies that register trademarks in each state http://statetm.tripod.com/

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 ($30 fee) Duration of protection runs the life of the author, plus 70 years See the U.S. Copyright Office at the Library of Congress http://www.copyright.gov/http://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 Examples: the formula for Coca-Cola, the recipe for Kentucky Fried Chicken

37. The Patent Process: U.S. See the USPTO website http://www.uspto.gov/ for basic information about patents and the patent process:http://www.uspto.gov/  How to get a patent  Registered Patent Attorneys & Agents  Fees and payments (see Patent Assistance Center). (The basic filing fee for a utility patent is $300, $150 if a small entity, plus fees for additional claims, etc.  Search patents (also patent applications – those that have been accepted)  File and check status (attorneys)  See also Nolo Press’s title: Patent It Yourself, available at the Library or via http://www.nolo.com/http://www.nolo.com/

38. ‘Guides’ are below

39. Manual of Patent Examining Procedure Guides: MPEP  http://www.uspto.gov/web/offices/pac/mp ep/index.html http://www.uspto.gov/web/offices/pac/mp ep/index.html Laws and Rules

40. The First Step: a Preliminary Patent Search Patent searchers often find that something similar to theirs has been patented, and they don’t need to proceed through the long, expensive patent process There are 6,900,000+ U.S. Patents Just because it’s not on the shelves at ______ doesn’t mean an item hasn’t been patented or doesn’t exist The more information available, the better the decision making process The patent process is costly (professional search  $1,000.

41. Searching Patents on the Internet If you’re looking for a single representative patent (something that is close to your idea), then keyword searching available on the USPTO (U.S.) or Espacenet (World) Web sites may suffice BUT If you want to be able to say “nothing else like mine exists,” then you must perform a U.S. classification based search The USPTO uses a class/subclass system to organize patents into like groups (as to how they work) NOTE: It is only very recently that all of this can be done online. For years we used paper and microfilm.

42. 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/http://www.alternatiff.com/

43. Searching U.S. Patents on the USPTO Site Patents may also be searched by field (inventor, assignee, city, state, etc.) Patent application information is also available

44. Steps to Starting Patent Search 1. Start at http://www.uspto.gov/go/classification/http://www.uspto.gov/go/classification/ 2. Use the US Patent Classification A-Z Index online or in paper and locate your subject and initial class/subclass. 3. Examine Class Numbers and Titles (Manual of Classification in paper..) and Definitions online or in paper to further define the class/subclasses to search. 4. Look at patents online assigned to selected class/subclasses. * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * Or do a Keyword search. Study relevant patents to determine appropriate class/subclasses.

45. Patents: Search at http://www.uspto.gov/http://www.uspto.gov/ Keyword Applications Class/Subclass

46. To Do a Good Preliminary Search It is important to determine the appropriate class(es)/subclass(es) for your invention and to examine all of the patents in that class(es)/subclass(es). It is very helpful to locate an already existing patent that is similar to your idea using either the Index or a Keyword Search. On the first page of every patent are the classes/subclasses assigned to that patent according to how it WORKS. You can use these to guide you in your search.

47. USPTO Class/Subclass System Divisions of patented technology For more help see HELP at http://www.uspto.gov/go/classification / http://www.uspto.gov/go/classification /

48. There are 450+ Classes

49. USPTO class/subclass system, example http://www.uspto.gov/go/classification/ (where 040 is replaced by the class you’re investigating) Every one of these (subclasses) is a LIST of patents. Each list may have as few as 40 or as many as 400 patents in it. The dots work as an outline. All the patents on 43/206 meet the criteria of License Plates: Illuminated, With Translucent Plate, Plural or Sectional.

51. Search Example Using the Index A motorized or automated shade system for an automobile Process: 1. Go to the US Patent Classification site http://www.uspto.gov/go/classification/ 2. Use the US Patent Classification A-Z Index to locate your subject 3. Examine Class Numbers and Definitions to further determine the class/subclasses to search http://www.uspto.gov/go/classification/ 4. Look at patents online assigned to selected class/subclasses

54. Think of key terms to describe the item and look them up in the Index. Click on “A” in the A-Z list and scroll down to ‘Automobile.’ Scan to see if there are entries that relate to a sun screen. There are none. After a few more tries (sun, shield, etc.), it is finally under Glare, 97.1

55. In class 296 Land Vehicles, scan below 97.1 to see if a more specific subclass can be identified. Click on the red P’s to see the patents in any of the subclasses. You can view patents back to 1790. Click on the subclass numbers for definitions or more information about the subclass.

56. This is the Definition for subclass 97.4, Glare screen or visor with actuating means for moving in class 264 Land Vehicles. Note the suggestions for other subclasses to search.

57. By clicking on the red P, this is a listing of the 185 patents in Class 296 Subclass 97.4

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

59. Search Example Using a Keyword Search Or start with a Keyword search Use USPTO full-text Advanced Search http://patft.uspto.gov/netahtml/search- adv.htm http://patft.uspto.gov/netahtml/search- adv.htm Describe it as clearly as possible Use “$” to find other forms of a word Study relevant patents to determine appropriate class/subclass Searches 1976 to present only

60. Samples, Keyword Searching Friction testing devices:  friction and testing (20,000 patents)  “friction test”  abst/friction and abst/test$ (265 patents)  abst/”friction test” (8 patents)

61. At: http://patft.uspto.gov/netahtml/search-adv.htm Search automatic and sun and shade and vehicle

62. Scan down through the list of patents until you find one that looks close to your idea. Remember that this search will only retrieve patents back to 1976.

63. Automatic sun visor. 9 patents into the list of 158 patents.

64. Note classes and subclasses. If this patent is close to your idea, all of the patents in these classes/subclasses should be examined. Click here to see the full-text and images of the patent. Requires plug-in. Read the claims to see what this patent protects.

66. Vehicle with a Protective Sun Shade in the Roof Patent No. 6,536,829

67. Motor Driven Sunshield Patent No. 6,227,601

68. Search Published Applications Once Classes/Subclasses for your research have been determined, search Published Applications

70. Other ways to search Search by fields  Inventor  Assignee  City, State Search patent application information via Public PAIR (Patent Application Information Retrieval)  Images of correspondence sent to USPTO  Availability depends on date filed and if published after 18 months  Also private PAIR for inventors and attorneys