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 suzanne.holcombe@okstate.edusuzanne.holcombe@okstate.edu, (405) 744-6546 www.library.okstate.edu/patents/

2. Overview OSU USPTO Why IP is important Searching patent literature

3. OSU Library Government Documents Department 5 th floor  Cooperates with U.S. Government Printing Office to receive and make available materials from federal agencies  Most materials available electronically Patent and Trademark Library 5 th floor  Cooperates with U.S. Patent and Trademark Office  Most materials available electronically

4. U.S. government basics for business Business.gov (small businesses)  www.business.gov/ www.business.gov/ Stat-USA.gov (general economic indicators, international trade)  www.stat-usa.gov/ www.stat-usa.gov/ U.S. Small Business Administration  www.sba.gov/ www.sba.gov/ Export.gov  www.export.gov/ www.export.gov/ Manufacturing.gov  www.manufacturing.gov/ www.manufacturing.gov/ And many others for data, resources, etc.

5. U.S. Patent and Trademark Office http://www.uspto.gov/ About USPTO  Federal agency in the Department of Commerce  Occupies five interconnected buildings in Alexandria, VA  Employs over 7,000 full time staff to support its major functions--- the examination and issuance of patents and the examination and registration of trademarks [IP]  Fee-funded since 1990

6. USPTO Headquarters Alexandria, VA

7. U.S. Patent and Trademark Office http://www.uspto.gov/ Introduction and Mission: to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries (Article 1, Section 8 of the United States Constitution).  Administering the laws relating to patents and trademarks.  Advising the Secretary of Commerce, the President of the United States, and the administration on patent, trademark, and copyright protection.  Advising the Secretary of Commerce, the President of the United States, and the Administration on the trade-related aspects of intellectual property.

8. USPTO Web site http://www.uspto.gov/ Navigate on the left and top  Patents, Trademarks, Copyrights  E-business Buttons at right  Jobs  Stopfakes.gov  Accelerated examination  Strategic Plan  Performance and Accountability Report

9. Jobs at USPTO Patent examiners Trademark positions Corporate positions

10. IP – Critical for any R & D Property that can be protected under federal law  Patents  Trademarks  Copyrights

11. Search IP on USPTO Web site Search IP (Patents, Trademarks) at no charge on USPTO Web site Must know classification system to do a good preliminary search Not a complete search. Consult a patent attorney

12. You work for a small or large company You have a new product, technology, service (or an idea for one)  aka New Venture Creation What are your first steps?

13. You are faculty, graduate assistants, students at OSU You have new research What are your first steps?

14. Check to see if your invention or product already exists Protect your product/research

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

16. Intellectual Property at IBM http://www.ibm.com/ibm/licensing/

17. Intellectual Property at OSU http://www.vpr.okstate.edu/ipm/

18. 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

19. IP: Patents Patents reveal solutions to technical problems, and they represent an inexhaustible source of information “A patent document has much more detailed information about a technology than any other type of scientific or technical publication. It is also a unique source of information; on average, 70% of the information disclosed in patents is never published anywhere else.” WIPO

20. Google? Google Patents  http://www.google.com/patents http://www.google.com/patents FreePatentsOnline  http://www.freepatentsonline.com/ http://www.freepatentsonline.com/ *Ok for keyword searches, but not in- depth preliminary research

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

22. 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.)  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)

23. 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.

24. 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.

25. 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

26. 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

27. 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)

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

29. Stephen McKeever, OSU Physics Dept. Assigned to the OSU Board of Regents Method for Determining an Unknown Absorbed Dose of Radiation.. 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

30. 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.

35. 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/

37. Search Worldwide Patents: Espacenet via European Patent Office

38. 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

39. 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.

41. 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

42. 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.

44. 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

46. 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 Congress http://www.copyright.gov/http://www.copyright.gov/

47. 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

48. USPTO Web Site See the USPTO web site http://www.uspto.gov/ for basic information about patents and the patent process: http://www.uspto.gov/  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/

50. 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 7,000,000+ 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 patent process is costly (professional search  $1,000

51. 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/

52. U.S. and International Classification Systems There is a U.S. and an international classification system which classify patents by technology groups. Noted on the first page of a patent 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).

53. There are 450+ U.S. Classes Find classes applicable to your product/research

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

55. How do I know where my invention/research fits in the 450 classes? Start with a keyword search Locate applicable patents Examine their classifications Search these classifications

56. Steps to Starting a Patent Search 1. Start at http://www.uspto.gov/http://www.uspto.gov/ 2. Go to Patents  Search  Advanced Search (Issued patents) 3. Think of words that describe your research/invention and combine them together using ‘and.’  Function  Structure 4. Look through the list of patent retrieved and locate a patent that is in your area of research. 5. Note the class/subclasses on this patent. 6. Plug these in at http://www.uspto.gov/go/classificationhttp://www.uspto.gov/go/classification 7. Click on the red ‘P’s’ to examine all patents in those classes. 8. Also search published applications by class. 9. Can also search by Inventor, Location, Date, etc. For international patents search Espacenet http://ep.espacenet.com/http://ep.espacenet.com/

57. USPTO Patents  Search http://www.uspto.gov/ 1. Keyword 2. Class/Subclass 3. Applications 4. Espacenet http://ep.espacenet.com/ http://ep.espacenet.com/

58. A motorized or automated shade system for an automobile Example search  automatic and sun and shade and vehicle  Use abst/ to narrow searches

59. Samples, Keyword Searching Friction testing devices:  automatic and sun  “sun shade”  abst/auto$ and abst/sun  abst/”sun shade”

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

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

62. Automatic sun visor. 37 patents into the list of 190 patents.

63. 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. Automatic sun visor and solar shade system for vehicles

64. 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

65. http://www.uspto.gov/go/classification/

66. 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.

67. 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.

68. By clicking on the red P, this is a listing of the 190 patents in Class 296 Subclass 97.4

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

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

71. Search Published Applications Once Classes/Subclasses for your research have been determined, search Published Applications Search Espacenet for foreign patents

73. Conclusion In general... Patents protect the invention and how it works. Patents are available on the Internet, but are not as easy to search as it appears. Thorough patent searching requires that an appropriate class/subclass be found and patents in that class/subclass be examined.