Basic PatentsJohn Meier

Patent and Trademark Resource Center Librarian

Pennsylvania State University

http://www.slideshare.net/johnmeier1/patent-basics

I am not a lawyer

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

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”

Limited time

• 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

Criteria for patentability

• Utility - must be useful, or have a use

• Novelty - must be new, no “prior art” that is examples from before patent filing

• Non-obvious - the difference between existing prior art and the invention must be sufficiently great to deserve a patent

Novelty

Non-obvious or inventive step

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.

How long to get a US patent?

• Application filed to first response by USPTO16 months (on average)• Total time to final decision on a patent25 months (on average)http://www.uspto.gov/dashboards/patents/main.dashxml

Times vary by area of technology

Accelerated examination is available for a fee

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How much does a patent cost?

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

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 $2055Average cost around $20,000 with attorney fees but highly variable

Free resources to help you

• Philadelphia Patent Pro Bono Programhttp://www.artsandbusinessphila.org/pvla/patentprobono.asp

• Penn State Law IP Clinichttps://pennstatelaw.psu.edu/practice-skills/clinics/intellectual-property-clinic/ip-clinic-client-application

• Penn State Small Business Development Centerhttp://sbdc.psu.edu/

Parts of a Patent

The “Front Page”

• Patent Number• Filing Date and Issue Date• Title of the Invention• Inventor or inventors • Assignee - Owner• Classification - IPC, USPC,

CPC• References Cited• Representative Drawings

Parts of a PatentThe Disclosure

• Background of the Invention

• Brief Summary of the Invention

• Detailed Description of the Invention

• Claims– Define the boundary

of legal protection

Patent search strategiesClassification Searching

G08G 1/0112SECTION G = physicsCLASS G08 = signaling instrumentsSUBCLASS G08G = traffic control systemsGROUP G08G 1/00 = for road vehiclesSUBGROUP 1/0112 = “Floating car data sources for measuring and analyzing traffic movement…”

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 downloadinghttp://www.google.com/patents • esp@cenet – European patent office website that

provides a search engine of worldwide patentshttp://worldwide.espacenet.com/

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

Resources available at the PTRC

• John Meier meier@psu.edu@johnmeier1https://www.linkedin.com/in/johnmeier1

• Books on patents and searching– Patent Pending in 24 Hours– Patent it Yourself– Patent Searching made easy

http://guides.libraries.psu.edu/patents