Discussion for intellectual property issues for an upper level business course.

1. Finding Intellectual Property
Information
John Meier
meier@psu.edu
Science Librarian
Pennsylvania State University
http://www.libraries.psu.edu/psul/researchguides/patents.html

2. I am not a lawyer

3. “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

4. 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

5. 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. 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

8. Exclusive rights
• Copyright = Automatically protected from
unauthorized copying, registration is not required,
but provides legal advantages
• Patent = Registration gives the right to exclude
others from making, using, or selling the invention
• Trademark = Registration gives the right to exclude
others from using the trademark in a particular
industry and the trademark must be “well known”

9. Criteria for Copyright
• Copyright
– 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

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

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)
Smiths application prevails because her
publication is within the one-year grace
period

14. 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

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

16. 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.

17. How long for a patent to be
approved?
•
•
•
•
•
Application Filed
First Office Action Received
Response to Office Action Filed
Patent Allowed
Patent Issued
At this time it takes an average of 34 months.
• You can search in Public PAIR (Patent
Application Information Retrieval) for more
information

18. 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
18

19. How much does it cost to get a patent?
• The cost to obtain a U. S. Patent averages out to
$20,000 (highly variable)
• Foreign patents can raise the expense to over
$100,000 very easily
• The patent holder is responsible for bringing legal
suit against infringement. Cases can be very slow or
very expensive, costing millions of dollars
– Courts may award lost profits, damages, and legal fees to
the plaintiff (patent holder)

20. 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.
In December of 2012, US District Courts found Marvell
Technology Group infringed on Carnegie Mellon
University patents and awarded $1.17 Billion in
damages.

21. Parts of a Patent
The “Front Page”
•
•
•
•
•
•
Patent Number
Filing Date and Issue Date
Title of the Invention
Inventor(s)
Assignee(s)
U.S. CL. and Field of Search
are Classification
• References Cited
• Representative Drawing

22. Parts of a Patent
The Disclosure
• Background of the
Invention
• Brief Summary of the
Invention
• Detailed Description of the
Invention
• Claim(s)
– Define the boundary of
legal protection

23. Search Strategies
• Patent Number Searching
– Ex: 7294753
• Search by a known field: inventor or assignee
– Ex: “Jobs, Steven” or “Apple Inc”
• Classification Searching
– Ex: CLASS 800 = multicellular living organisms
– SUBCLASS 800/4 = method of using a transgenic
nonhuman animal to manufacture a protein…
• CPC Class “A01K 2217/05”

24. 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/

25. Custom Databases
• Patent Lens http://www.patentlens.net/
– Legal and genetic sequence data
• Patent Scope
http://patentscope.wipo.int/search/en/search.jsf
– Some visual display tools
• Non-patent literature
– Scholarly journal and newspaper databases
– Lionsearch
http://psu.summon.serialssolutions.com/

26. Finding Trademarks
• Why search trademarks?
– Discover if a word or mark is already registered
• Search Tools
– 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

27. Resources available at the PTRC
• Patents on disc for large downloads
• Publications of the USPTO
– Handouts and help sheets
– Fee information (up to date)
• 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