16 Nov 2004 Patents and Searching Heather Gallant How to do your own patent search What is a patent? –Design vs. Utility vs. Plant What can I patent? Why

LEADERS OF TOMORROW16 Nov 2004Patents and SearchingHeather Gallant

How to do your own patent search

• What is a patent?– Design vs. Utility vs. Plant

• What can I patent?

• Why do my own search?

• What tools can I use to search?

• Some approaches


What is a patent?

A patent is a property right granted to the inventor by the patent office.

“…the right to exclude others from making, using, offering for sale, or selling…” or importing the invention into the jurisdiction

Limited by the term (17 to 20 years), the scope of the patent, the jurisdiction, and subject to the rights of other patents and agreements.

Once issued, patentee must enforce the rights.


How do I get a patent?

To get a patent on an INVENTION,

You must have an invention that is patentable

You must describe the invention and apply for a patent

The patent office must examine the patent (and criticize it) and hopefully grant/issue the patent

… and you must pay fees and argue/justify/clarify your invention through the prosecution process


What can I Patent?

YOU must – be the inventor; or– have the ownership assigned to you; or– have the right to patent assigned or granted to

you

YOU (or your agent) must apply for a patent– Describe the invention in sufficient detail to

allow others skilled in the art to duplicate it


What is patentable?

The invention must fall into one of five statutory classes if applying for a utility patent:

• Process (methods and software processes) • Machines (conventional and software machines) • Manufactured Products (nonmoving parts)• Compositions of Matter

(chemicals, alloys, and pharmaceuticals)• New Uses of Any of the Above


Patentability

• USEFUL– useful purpose– operativeness (invention must serve purpose)

• NOVEL (new)– Not known or used by others– Different from prior art– Not patented or publicly disclosed previously

1 year grace period in US and Canadamost other jurisdictions have absolute novelty requirement

• Non-OBVIOUSNESS– “sufficiently different from what has been used or described

before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention”


Patentability can be difficult to determine

• May need expert analysis or opinion

• Negative patentability assessment saves$– Can refocus work to decrease risk– Can abandon risky/non-patentable research


Exclusions to patentability

• inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons (Atomic energy act US, 1954)


Other exclusions• Superior material for inferior • Change in size, form, or shape • Mere adjustabilty• Diminution of parts • Omission of parts • Use of old art for another purpose

Mere aggregation • Laws of nature • Physical phenomena • Abstract ideas • Literary, dramatic, musical, and artistic works (these should be copyright

protected) • Inventions which are against the laws of nature (ex. perpetual motion

machines) • Inventions whose only use is for illegal purposes (ex. torture devices)


Patent Myths

• Patents are all valuable– <2% of patents have commercial value

• Patented inventions are verified by the gov’t• Provisional patents are valid for 1 year

– Sets priority date, need to convert to regular appl• Provisional patent applications just need to

describe the concept– Need to enable the invention, claims useful

• You can patent an idea• A patent can be enforced for 20 years

– Issuance to expiry: 17 years in US


Myths, con’t

• A patent give the owner the right to make, use, sell the invention– Gives enforcement rights

• A US patent is honoured world-wide– Jurisdiction specific

• A patent protects an invention– Owner must enforce rights

• The first thing you should do on getting an inventive idea is file a PATENT– Save your money, don’t disclose, use CDAs, keep

good records, make a business decision to file


Why do my own patent search?

• Cheaper than hiring a pro at first

• Familiarize with similar patents

• Familiarize with patent conventions

• Familiarize with competitive products

• Learn about patent process, categorization

• Focus on new areas for your research

• Rule out known/similar inventions


Tools• http://www.lib.utexas.edu/engin/patent-tutorial/appsearching.htm

– Tutorial for USPTO searching• http://www.uspto.gov• http://www.uspto.gov/web/patents/classification/uspcindex/indextouspc.htm• http://www.alternatiff.com/

– TIFF viewer for USPTO images• http://www.wipo.int/pct/en/gazette/gazette.htm• http://www.wipo.int/ipdl/en/• http://www.wipo.int/classifications/en/• http://gb.espacenet.com/ (epo keyword)

• http://patents1.ic.gc.ca/intro-e.html (cipo)

• http://www.surfip.gov.sg/sip/site/sip_home.jsp – (multi-jurisdictional, keyword)


Where to start

• Brainstorm, break the invention down– potentially patentable aspects of the invention

• Check the classification system

• Search for similar patents

• Search by keyword (>1976)

• Search your competitors, heroes


Questions to ask yourself

• What does the invention do?

• What is the end result?

• How does it work?

• What is it made of?

• What is it used for?

• What problem(s) does it solve?


Review patents or potential interest

• Browse titles, view lots of documents• Use classification and search within

sub/classes– Link to classification list (P)– Link to published applications (A)

• Use html display of individual patents– “find” keywords in text

• Use IMAGE (tiff viewer) to print• If extra large docs, buy from micropatent


Tips

• Patent searching is iterative (how invention works)• Patent language and classification is difficult

– Legal, technical, merely descriptive (keywords may be useless)– "Four rectangular uprights supporting a planar surface"

describes a table

• Search published applications and issued patents• Search broad date range (within reason)• Search USTPO, CIPO and EPO• Use ESPACENET if your keywords are good• Search classifications using keywords• Keep a list of terms, classes searched


Tips, con’t

• Negative results are difficult to justify. • You should at least find related stuff.• Allow several days or more and several sessions for

searching• Ask friends, colleagues, students to search, too• Consider this is a preliminary search• Consider investing in a professional search• Poke around USPTO, CIPO websites for tips, info• Don’t neglect a market search! Literature search!

Google searching!

Documents

16 Nov 2004 Patents and Searching Heather Gallant How to do your own patent search What is a patent? –Design vs. Utility vs. Plant What can I patent? Why