I Just Invented a Generally Spherical Object with Floppy Filaments to Promote Sure

Capture. Now What Do I Do?

John MeierScience Librarian

Pennsylvania State University

“The Congress shall have the power 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.”

U.S. Constitution, Article 1, Section 8

Limited Time Is 20 Years for Utility Patents

So…

• How to search patents for research or as an inventor?

• How do you get a patent?• Resources available at the PTDL in the Physical

and Mathematical Sciences Library on campus in 201 Davey Lab

Why search patents?

• To find out whether something is patentable• To discover what resources are needed• To learn how things work• To revisit answers that others have found to your

own technological questions.• To identify a research direction taken by a specific

company or inventor• To research the history of inventions and inventors

Can’t I just browse through all the patents?

Not through more than 7,000,000 patents!

Starting on January 1st, and using 40-hour work weeks. A person browsing one patent per second would reach U.S. patent number 7,000,000 by...

The beginning of December!

Parts of a Patent

The “Front Page”

• Patent Number• Filing Date and Issue Date• Title of the Invention• Inventor(s) • Assignee(s)• Field of Search and References Cited• Representative Drawing

Parts of a Patent

The Disclosure

• Drawings (as needed for clarity)• Background of the Invention• Brief Summary of the Invention• Detailed Description of the Invention• Claim(s)

Search Tools

• CASSIS or PubWEST – Computer software available at Patent Depository Libraries

• U.S. PTO Website – Free database of U.S. patents – limited searching

• esp@cenet – European patent office website that provides a search engine of worldwide patents

• Google Patents – Full text searching of all patents along with PDF files for downloading

How to search? The 7 Step Strategy!

• Classification– 1. Brainstorm keywords related to the purpose, use and

composition of the invention. – 2. Look up the words in the Index to the U.S. Patent

Classification to find potential class/subclasses.http://www.uspto.gov/go/classification/uspcindex/indextouspc.htm

– 3. Verify the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification .

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

– 4. Read the Classification Definitions to verify the scope of the subclasses and note “see also” references

How to search? The 7 Step Strategy!

• Access Full-Text– 5. Search the Issued Patents and the Published

Applications databases by “Current US Classification” and access full-text patents and published applications.

http://www.uspto.gov/patft/index.html

• Review and References– 6. Review the claims, specifications and drawings of

documents retrieved for relevancy.– 7. Check all references and note the “U.S. Cl.” and “Field of

Search” areas for additional class/subclasses to search.

How do you get a patent?

• Invent something– Be the first to invent in the U.S. to receive a patent– Document your discovery (notebook, witness)

• Explain how it works– Detailed written description– Drawings if necessary to understand the invention

• As soon as you want to start the clock– File a Provisional Patent Application

How do you get a patent?

• First, search to see if your invention is novel– Look in the patent literature– Also look in non-patent literature in the subject

such as trade journals, scholarly articles and newspapers

• File a non-provisional Patent Application– Complete all the required elements– Claims are the legal scope of the patent

At every stage pay fees and respond to Office Actions!

How long does it take?

• Application Filed• First Office Action Received• Response to Office Action Filed• Patent Allowed• Patent Issued

At this time it takes an average of 22 months.

How much does it cost?

The cost to obtain a U. S. Patent is about $20,000 (highly variable)

The U.S. PTO estimates a minimum of $4,000 over the life of the patent

Foreign patents can raise the expense to over $100,000 very easily

The patent holder is responsible for bringing legal suit against infringement. Cases are very slow and very expensive, costing millions of $$

Benefits

• They give the inventor the opportunity to produce and market the invention himself, or license others to do so, and to make a profit.

• A license agreement allows the patent owner to grant rights to a commercial entity that wishes to practice the patent in return for payment.

• License enforcement can include collection of fees and royalties, auditing as needed, due diligence, renegotiation, termination, etc

Resources available at the PTDL

Resources available at the PTDL

Resources available at the PTDL

• CASSIS• PubWEST• Publications of the USPTO

– Patent print indexes (historical)– Handouts and help sheets– Fee information (up to date)

• Books on patents and inventing (not available to check out)

Websites

Penn State University Libraries Patents Research Guidehttp://www.libraries.psu.edu/psul/findmaterials/patents.html

Lisa Brownlee’s Following the Law blog, Centre Daily Timeshttp://community.centredaily.com/?q=node/6190

US Patent and Trademark Office – Inventor Resourceshttp://www.uspto.gov/web/offices/com/iip/index.htm