This presentation provides an overview of copyright, patents, trademarks, and trade secrets. Patents are explained in detail, and strategies for effective prior art patent searches are explained.

1. Introduction to Intellectual Property
and Patent Searching
John Meier
Patent and Trademark Resource
Center Librarian
Pennsylvania State University
http://psu.libguides.com/patents

2. Penn State University Libraries
are a Patent and Trademark
Resource Center (PTRC)
We can teach you to perform patent and trademark
searches and provide information on applying to the
US Patent and Trademark Office (USPTO).
We are not patent attorneys. We cannot provide
legal advice, and we will not do legal research for
you.

3. Four types of intellectual property
• Patents
– Exclude others from making, using or selling their
invention
• Copyright
– Author’s original creative work
• Trademark
– A logo or name for a product is protected in a
particular industry and geographic region
• Trade secret
– idea or invention protected by secrecy

4. Multiple Types of Patents
• Utility patents
- functional or structural novelty
Examples: Light bulb or the “comb-over”
• Design patents
- ornamental designs
Example: An athletic shoe sole design
• Plant patents
- varieties of plants
Example: Poinsettia plant named “Eckaddis”

7. Duration of protection
• Copyright = Life of the author + 70 years
• Utility patents = 20 years from filing date
• Design patents = 14 years from issue date
• Trademarks = Renewed as long as product in
the market
• Trade secrets = as long as it remains secret

8. Criteria for Copyright
• Copyright
– Does not require registration, copyright is
automatically secured upon creation
– Registration provides some advantages
– must be original
– cannot consist solely of facts
“write a paper or a book, develop a computer program,
send an e-mail, or take a photograph, you automatically
own copyright to that work” - American Chemical
Society

9. Criteria for Trademarks
• Trademarks
– can be a word, phrase, symbol or design
– must already be used in interstate commerce
(with some exceptions)

10. Trade Secrets
• Trade Secrets are not generally known and
must be subject to reasonable efforts to
preserve confidentiality
– Customer lists, product formula, search algorithms
• How do you lose a trade secret?
– Insufficient security, owner reveals the secret,
reverse engineering, independent discovery

11. Criteria for patentability
• Utility
- must be useful, or have a use
• Novelty
- must be new, no “prior art”
Non-obvious
- the difference between existing art and
the invention must be sufficiently great
as to warrant a patent

13. Novelty and Priority
0 month, Smith invents
+6 months, Smith publishes
+3 months, Smith files patent application (9
months)

14. Novelty and Priority
0 month, Smith invents
+6 months, Smith publishes
+3 months, Smith files patent application (9
months)
Smiths application prevails because her
publication is within the one-year grace
period

15. Novelty and Priority
0 month, Green invents
+1 month, Smith invents
+6 months, Smith publishes
+3 months, Green files patent application (10
months after invention)

16. Novelty and Priority
0 month, Green invents
+1 month, Smith invents
+6 months, Smith publishes
+3 months, Green files patent application (10
months after invention)
Green`s application fails because Smith`s
paper is prior art

17. Novelty and Priority
Boucher, P. (2012) Recent developments in US patent law.
Physics Today http://dx.doi.org/10.1063/PT.3.1397

18. Non-obvious or inventive step
1. identifying the closest prior art
2. in the view of the closest prior art, determine
the technical problem which the invention
addresses and successfully solves
3. examining whether or not the claimed
solution to the objective technical problem is
obvious for the skilled person in view of the
state of the art in general.

19. How long to get a US patent?
• Application filed to first response by USPTO
16 months (on average)
• Total time to final decision on a patent
25 months (on average)
http://www.uspto.gov/dashboards/patents/main.dashxml
Times vary by area of technology
Accelerated examination is available for a fee

21. 21
How much does it cost to get a
patent?
Large Entity Fees
- Starting at around $2000
- Maintenance for 20 years $9000
Small Entity Fees
- Starting at $1000 for a patent
- Maintenance for 20 years $4500
Micro Entity (no more than 4 apps)
- Starting as low as $500 for a
patent
Subject to change frequently, only includes fees due to the USPTO

22. How much does it REALLY cost to get a
patent?
• Provisional Patent Application $1600-3500
• Conversion of Provisional to U.S. Patent Application
$5000-$10,000 in Attorney fees, $900 USPTO fee,
possible $2500-$5000 PCT fee = $8400-$15,000
• First Office Action $2500-5000
• Second Office Action $2500-5000
• Drawing, Issue Fees and Publication $2000-4000
• Maintenance Fee – 3.5 years $490
• Maintenance Fee - 7.5 years $1240
• Maintenance Fee – 11 years $2055
Average cost around $20,000 with attorney fees but highly variable

23. Free resources to help you
• Philadelphia Patent Pro Bono Program
http://www.artsandbusinessphila.org/pvla/patent
probono.asp
• Penn State Law IP Clinic
https://pennstatelaw.psu.edu/practice-
skills/clinics/intellectual-property-clinic/ip-clinic-
client-application
• Penn State Small Business Development Center
http://sbdc.psu.edu/

24. Benefits of getting a patent
• 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.
On August 24, 2012 a U.S. federal jury found that
Samsung mobile devices infringed six of Apple’s patents
and awarded $1.05 billion in damages.

25. Parts of a Patent
The “Front Page”
• Patent Number
• Filing Date and Issue Date
• Title of the Invention
• Inventor(s)
• Assignee(s)
• CPC and Field of Search
are Classifications
• References Cited
• Representative Drawing

26. Assignee
Penn State Office of Technology Management (OTM)
https://www.research.psu.edu/otm

27. Claims

29. The importance of Prior Art
Prior art is important for both novelty and
non-obviousness
• Previous patents
• Scholarly articles and trade journals
• Books
• Catalogs
• Websites

30. Patent Searching strategies
Keyword Searching
Parking App
• Patent Number Searching
– Ex: 7294753
• Search by a known field: inventor or assignee
– Ex: “Jobs, Steven” or “Apple Inc”

31. Patent search strategies
Classification Searching
G08G 1/0112
SECTION G = physics
CLASS G08 = signaling instruments
SUBCLASS G08G = traffic control
systems
GROUP G08G 1/00 = for road
vehicles
SUBGROUP 1/0112 = “Floating car
data sources for measuring and
analyzing traffic movement…”

32. • Cooperative Patent Classification Searching
https://worldwide.espacenet.com/classification
You can search or browse for classifications

33. Search Tools
• U.S. PTO Website – Free database of U.S. patents –
limited searching
http://patft.uspto.gov
• Google Patents – Full text searching of all patents
along with PDF files for downloading
http://www.google.com/patents
• esp@cenet – European patent office website that
provides a search engine of worldwide patents
http://worldwide.espacenet.com/

34. Finding Trademarks
• Why search trademarks?
– Discover if a word or mark is already registered
• Search Tools http://tess2.uspto.gov
– TESS and TEAS – free databases from the U.S.
trademark office for trademarks and applications
– You can do a visual or a text based search
• Design Codes are used for image searching
• Use wildcards “*” and “$” to find spelling variations

35. Resources available at the PTRC
• Librarian: John Meier meier@psu.edu
814-867-1448
• Publications of the USPTO
– Handouts and help sheets
• Books on patents, trademarks and inventing
and how to search for IP information
– Patent Pending in 24 Hours
– Trademark : legal care for your business & product
name
• Tutorials and research guide