This presentation is intended to help you understand the different types of intellectual property: Copyright, Patents, Trademarks, and Trade Secrets. Then the process and benefits of obtaining a patent will be discussed. Finally patent searching, which is important for determining if an idea is already patented, will be introduced with basic and advanced examples. You can find all the information sources from this presentation plus many more on the Research Guide http://psu.libguies.com/patents There is also a self-paced tutorial on patent searching on the Tutorials section of the guide. 1
As a Patent and Trademark Resource Center (PTRC), the Pennsylvania State University Libraries has a mission to support both our students and the public with finding patent and trademark information along with locating application materials. You can contact John Meier (meier@psu.edu) to schedule a consultation appointment or send any questions to him as the PTRC representative. 2
These are the four main types of intellectual property in the United States. The first 3 patents, copyright, and trademarks are public registrations with the government that give a limited monopoly on an idea or creative work. Trade secrets are protected by law, but do not require registration. 3
There are actually 3 types of patents in the U.S. Utility patents are what most people commonly understand as an invention: a device or process. Design patents have no functional novelty, but can be granted for purely ornamental designs. Plant patents are not genetic patents (like GMO corn) but are based on traditional plant breeding. 4
Where is the Intellectual Property in this? 5
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Each of the types of intellectual property is limited to a certain time before it becomes public domain, and anyone can use it. Copyright has been extended many times, so it keeps getting longer. Utility patents used to be 14 years but were changed to 20 years. Note that your protection on a utility patent starts as soon as you file the patent, so even if it takes 3 years to be granted, you can already begin using or selling the invention. Trademarks can be renewed indefinitely as long as the product or service is still being sold across state lines. 7
Copyright protects you from someone directly copying all or a significant part of your work. In order to have copyright over your original creation, you do not need to register. The advantages to registration are most useful in lawsuits when proof of date of copyright or the another factor is important. You can copyright anything you create, digital or print, but it can t simply be facts such as the weather temperature outside or a food recipe. Copyright registration with the U.S. Copyright Office is much less expensive than patents or trademarks. 8
Trademarks protect your brand, company, or product from confusion in the marketplace. Trademarks can be almost anything: words, an image, even a sound or color. It also must not copy a current trademark and must already be in use when registering. You can file for a trademark with an intent to use though you only have 1 year from filing to provide proof that you are doing so. State trademarks are also available, though offer limited protection. Trademarks are in general less expensive than patents to register. 9
Trade secrets do no require registration, but you must document all the efforts you use to keep it secret. Trade secrets do not protect against every eventuality, so they are used most often with certain types of data or ideas. For example, mathematical algorithms may not be patentable, so commercial applications are often kept as trade secrets. 10
Patents offer the broadest protection of any intellectual property, since they can be used to stop others from making, selling, or even importing your invention. It even protects you from someone coming up with the same idea on their own. However, there are more requirements to getting a patent than the other types of intellectual property. First it must have Utility, which means it has to work. Though you do not have to submit a prototype, the patent examiner must understand how it works. It also must be new, or novel, so no prior art or earlier examples of the idea can exist. Currently in the U.S. only there is a 12- month period after you make your invention public, when you and only you can apply for a patent on the idea. Finally the patent office must decide if the invention is non-obvious, which is their judgement on how great of an improvement on current technology it is. 11
Of course to get a patent, the invention must be shown to work, not just theoretically! Here is an application for Warp Drive Technology that was rejected for failing the utility test. 12
Here is an example of how someone else's prior publication of the idea would prevent you from getting a patent, even if you can prove you were the first to invent it (this was a change to the U.S. law in 2013. 13
This flow chart explains how you can test prior publications whether they are patents, news, or research articles to see if they would be prior art and prevent you from obtaining a patent. 14
Finally, what the patent office calls the inventive step must show how much the patent application overcomes a technical problem better than existing technology. Patent examiners are engineers, scientists, and people who have worked in industry so they are skilled in the art they are examining. 15
So what is most patentable? If your invention claims something too broad, such as I invented email then it is unlikely to be patentable. There are too many prior inventions that already do this. Additionally if you claim a very narrow improvement, it will only protect that specific example or circumstance. Later when you attempt to block infringement, your patent may not stop similar or derivative inventions. You want to balance your approach between these extremes. 16
The process of obtaining a patent takes much longer than copyright (instant or short registration period) and trademark (generally less than 1 year). Remember that you are protected from infringement as soon as you file, you are patent pending. Times vary by areas of technology and have been going down every year. 17
The patent examination process goes something like this. There is a back and forth between the applicant and the examiner, which may include a number of rejections or objections to portions of the application. You can even call your particular examiner on the phone to discuss problems with the application. The results is either a final allowance by the examiner, an appeal of the examiner s final rejection, or abandonment by the applicant. 18
These are the fees that the US Patent and Trademark Office charges for getting a patent (which are many separate fees) and maintaining it over up to 20 years. Large entities are large companies, while small entities are smaller companies or universities. A micro-entity is a new category, which many independent inventors and start-ups fall under (there is a maximum income limit and you can t have more than 4 applications filed) These fees are updated often so always check the USPTO website. 19
However the overall cost of a patent is generally much higher, considering legal fees. The attorney charges you for every hour they spend on your case, including corresponding with the USPTO. This is a breakdown of costs if you go with a patent attorney though the process. Also if it is an international application (PCT) which can begin the process of getting a patent in other countries, but you must also pay those offices additionally. So the average cost of one patent can be around $20,000. 20
What are the benefits of an investment in a patent? You have an intellectual property, which can be used to make the item or to enter into contracts (called licenses) for others to pay to use your idea. You can also sue for damages and lost profits, though you must bring the lawsuit yourself (the USPTO does not prosecute patent infringement). Even one patent can be worth millions of dollars. 21
So, what are the ways to make sure your investment in a particular patent is a good business decision. One way is a patent prior art search, which will determine if others have discovered your idea already. It can also increase your knowledge of the market and current technology. 22
In order to search effectively for current patents, you need to understand how a patent looks and the information it contains. The title of the invention is not usually useful, since they are not the name of the product, for example most of Apple s patents are for Computing Device. The Patent No. (patent number) is a unique identifying code, so you can find the same patent anywhere. Note the format Country then number than A for application and B for granted patent. Design patents in the U.S. begin with D. Inventors are all actual contributors to solving the technical problem, not the company or business owner. The Assignee is the current patent owner, often a company or law firm. Filing date is when the patent application was filed, utility patents expire 20 years after this date. Issue Date is the date the patent was granted, design patents expire 14 years after this date. Int. CL, U.S. CL are classifications or technology areas listing a patent. References Cited are related patents and non-patent publications similar or leading to invention. 23
The majority of the patent is a background of the invention, summary, and a detail description of how the invention works including diagrams and images. The last part of the patent, but very important are the claims that define the legal boundary of the patent. These are often written by patent experts, in order to avoid being too broad (rejected by the USPTO) or too narrow (limited in later protection. They can be independent claims such as We claim: 1. A method of placing an order or dependent claims such as The method of claim 1. whereas.. It is often a good idea to consult a patent attorney or legal expert with respect to claims. 24
Now that you know the parts of a patent, you can use them for different types of searching. If you know the patent number, it is very easy to find the patent. Sometimes products will have the patent number printed on them, it could be listed on the company website, and often Wikipedia will have a guess at the patents in a product. You can also search by a known aspect of the invention such as the inventor or company (assignee). But the most thorough, so you won t miss any patents, is to use classification searching. Since the patent office groups all inventions in one technology area into a classifications, you can limit where you search to just the area that applies to your idea. Here is an example of the Cooperative Patent Classification (CPC) system. The more specific the level the fewer patents are in the group, so Section A may have millions of patents, while Subgroup A01B 33/08 has only a few thousand. Because classification searching is so effective it is essential to the comprehensive strategy recommended by the USPTO http://www.uspto.gov/learning-and-resources/support-centers/patent-and-trademarkresource-centers-ptrc/resources/seven 25
Each of these search tools has different advantages. The USPTO s patent searches (one for applications and another for granted patents) has limited searching prior to 1976 (only patent number, issue date and classification). The advantage of the USPTO systems are that they are very current and reflect changes to the patent. Google patents is an easy interface and uses scanned copies of patents to provide full text searching of all patents. The data is not current, usually a few weeks behind, but Google links to the USPTO and other patent offices for the official data. Google includes some countries beyond the U.S. and has applications and patents in the same system. It also has an algorithm for prior art searching which attempts to find earlier patents, books, and websites. Finally the European Patent Office (EPO) has the most countries included in their search interface and provides the best CPC classification search tool. Some example search videos are included in our patent search tutorial https://libraries.psu.edu/patent-number-searching 26
You can always ask John Meier, the Patent and Trademark Resource Center librarian for help, no matter if you are a Penn State student, staff, faculty member, or just a resident of Pennsylvania. The PTRC provides handouts and help from the USPTO along with books and resources on patent and trademarks. Please use the research guide and tutorial for more detailed information http://psu.libguies.com/patents 27