Patents 101:How to Do a Patent

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Central Library Business and Technology Department

What is a Patent?

A patent is...

• a property right granted by the Government of the United States of America to an inventor,

• “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States,”

• for a limited time,

• in exchange for public disclosure of the invention when the patent is granted.

Requirements for a Patent

• New

• Useful

• Unobvious

• Fully disclosed

3 Types of Patents

• Utility Patents – granted for a useful process or method, machine, manufactured article or composition of matter.

• Term: 20 years from filing date

3 Types of Patents

• Design Patents – granted for new, original and ornamental design for an article of manufacture: the appearance is protected. • Term: 14 years from the date the

patent is granted

• Plant Patents – granted for a new, asexually reproduced plant. • Term: 20 years from filing date

What CANNOT be Patented?

• Inventions which are NOT NEW

• Inventions which are OBVIOUS variations of known technology (obvious to one familiar with technology)

• ABSTRACT ideas

What Cannot Be Patented? Changes from the Patent Reform

Act (S.23)

• Inventions MADE PUBLIC more than one year prior to patent application filing date OR made public by other independent inventor before the first inventor files an application.

Utility Patent Fees for Small Entities (as of 10/1/11)

Initial Filing Fee: $95 (electronic) / $190 (paper)

Search Fee: $310

Examination Fee: $125

Issue Fee: $870

Maintenance Fees: • 3.5 years: $565 • 7.5 years: $1425• 11.5 years: $2365

Prioritized Examination (opt.): $2400

* Provisional Patent Application Filing Fee: $125*

Process for Obtaining a Utility Patent

Why Are Patent Searches Necessary?

• To make sure your idea is new, to search for prior art

• To increase awareness of the product field

• To prepare for consulting an attorney

• To reduce patent attorney/agent fees

• To prepare for the application process

Ways to Search for Patents on USPTO Databases

• By Patent Number or Publication Number

• By Keyword (full text or selected fields)• Some problems: only from 1976 forward;

inconsistent terminology; obsolete names; synonyms (e.g. rodent extermination device); British spellings; spelling errors

• By U.S. Patent Classification• Recommended; Classification systems

categorizes things based on characteristics and relationships

U.S. Patent Classification

• There are currently 450 classes and 150,000 subclasses in the U.S. Patent Classification System (USPC).

• Use the online index to navigate USPC

7 Step Preliminary Patent Search Overview

• USPTO has developed a 7 Step Patent Search Strategy to increase the likelihood a novice searcher will do a thorough job of a preliminary patent search.

• Remember: all it takes is one patent to refute the “novelty” of one’s invention.

A Sample Granted Patent

Patent Search Example

A dog harness that carries a water pouch and has an attached water dispenser.

Step 1: Description of Invention

What does it do?

• Essential function of the invention

What is the end result?

• Essential effect or basic product resulting from the invention

What is it made out of?

• Physical structure of the invention

What is it used for?

• Intended use for the invention

Step 1: Description of Example, cont.

What does it do?

• An animal vest/harness that carries water and dispenses water for the animal

What is the end result?

• Water is stored in the vest/harness and is expelled through a connected dispenser

What is it made of?

• Polyester, plastic tubing, etc.

What is it used for?

• Used to spray water into dog’s (or other animal’s) mouth, or to spray dog’s paws.

Step 1: Description of Example, cont.

Consider Synonyms

• Dog, pet, animal, etc.

• Vest, harness, pouch, dispenser etc.

• Liquid, water, etc.

Step 2: Determine Classification Using the Index to U.S. Patent Classification

• Use the Index to find potential class(es) and subclass(es).

• Look up each term that describes the invention, e.g. function, composition, etc.

http://www.uspto.gov/web/patents/classification/uspcindex/indextouspc.htm

To Access the Patent Index

To Access the Patent Index

To Access the Patent Index

Step 2 Continued: Determine Classification

Use the HTML Index and click on “A” for animal. Is it also under “D” for dog?

Step 2 Continued: Determine Classification

A - Animal

W - Watering devices

Step 3: Class Schedule in Manual Of Classification Online

Click on the Class/Subclass number in the Index to U.S. Patent Classification – it will bring you immediately into the Class Schedule for your invention at the subclass level.

+ Indicates the subclass is further broken down

• 119/72+

• 224/148.2

Step 4: Classification Definitions

Click on subclass number or title to view and read the definition. Also includes a “SEE” section that will point to additional classes and subclasses to search. Dots show subclass relationships.

Step 5: Search U.S. Patents & Published Patent Applications

You have the class/subclass, now search!

USPTO has two searchable patent publication databases:

• PatFT (Patents Full-Text)• Patents back to 1976 accessible by

keyword searching and class/subclass• All U.S. patents back to 1790 by

class/subclass or patent number.

• AppFT (Published Patent Applications Full-Text)

Clicking on the P button next to subclass 72 will run the search for all patents within that class/subclass (119/72) in the PatFT database.

Clicking on the A button will run the search for all published patent applications within that class/subclass in the AppFT database.

Step 5: Search Each Database Separately Using A & P Buttons

PatFT Search Results

Step 5: Don’t Forget to Search AppFT

Step 6: Review Your Search Results

• Front Page; drawing sheets

• Specification• Background of the invention• Summary of the invention• Detailed description of the invention

Step 6: Review Your Search Results: CLAIMS

• Legal boundaries of intellectual property

• Located at the end of the patent document

Step 7: Review Reference Cited

Referenced By: links patents that cite the displayed patent.

References Cited: shows the other established patents viewed by examiners to determine the newness or novelty of the patent that was granted.

Step 7: Current U.S. Classification & Field of Classification Search

The field of search can provide valuable clues to other classifications that the patent examiner searched

7 Step Patent Search Review

1. Brainstorm keywords to describe the invention.

2. Use these keywords to find initial class/subclass in the Index to the U.S. Patent Classification.

3. Verify the relevancy of class/subclasses using the Classification Schedule.

4. Confirm scope of subclass in Classification Definitions.

5. Access patent documents and published patent applications using classification in PatFT & AppFT.

6. Review the claims, specifications, and drawings of documents retrieved.

7. Retrieve and review cited references and “Field of Classification Search” in documents retrieved.

Patent Attorney or Agents

USPTO recommends hiring an attorney or agent for assistance in preparing a patent. Patent preparation in legal language is a challenge.

Registered attorneys and agents are listed on the upsto.gov website:

https://oedci.uspto.gov/OEDCI/GeoRegion.jsp

Patents 101: Final Notes

• Document your searches! Write down what classifications you’ve searched, the databases you used, keep a list of patents and applications reviewed.

• Use the U.S. Patent Classification Suggestion form (included in packet)

• Explore the USPTO website

• Milwaukee Public Library has numerous books to help in the patent process.

Contacts

• USPTO Contact Center:

(800) PTO-9199

• Patent Electronic Business Center: (866) 217-9197

• Milwaukee Public Library Business and Technology: (414) 286-3051