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New to Business Guide |
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Search New Innovations |
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In this Section In order to be able to apply for a patent on a product, you need to know whether anything like it has already been patented. In order to determine this, you'll need to conduct a "patent search" to discover if a similar product has ever been patented. This process requires researching through patents in your specific category, as far back in history as possible. For about $500.00, you can do this through a patent attorney's office. But if you have the time and your city has a patent depository library, you can also do your own preliminary search for free. There are over eighty U.S. Patent Depository Libraries located throughout the United States, at least one per state. But first, here's the difference between a "patent" search and "trademark" search. Trademark Searches A patent search is completely different from a trademark search. A trademark search is a simple process of a computer going through a database of trademarked words to see if any of the words match. They will come up with a list of similar trademarks for you to review and determine whether your proposed name is already taken or not. A Company's trademarked name and logo is its intellectual property. If you find trademarks that are very similar to your proposed name, and are even in the same industry, you might consider a different name from the get-go to help you save money in filing it, then having to drop it and filing a new name because you are infringing on somebody's trademarked name. Companies who own trademarks can subscribe to a "trademark watch" service, which provides them with reports of similar names that are in the process of being trademarked. Therefore if your name is too similar, these companies will know about your trademark registration and you could receive a letter from their attorney that your proposed name is infringing upon their trademark. However, if your proposed name is the only name you want and you feel it is different enough from any other trademarked names, you can take it through the procedure of dialogue between attorneys to determine whether you will have a legal battle or not. Your attorney will be your best counsel on this. A trademark search usually costs in the range of $200.00. Patent Searches A patent search is a search of all the patented items in the U.S. Patent and Trademark archives to see if your product has already been patented. Up until 1995, patent durations were for 17 years from the date of the patent's issue. Therefore if you happen to find any patents exactly like yours, which have expired, these patents are now "public domain" and cannot be patented again. Similarly, if you find a patent, which is still active, you will not be able to patent your product unless it is different enough. However, finding existing patents whether in the public domain or active is very valuable to you because it can help you and your patent attorney develop your patent so that it isn't rejected based on past claims of these existing patents. This is where a good patent attorney is crucial. A patent search is a more specialized task than a trademark search, because to conduct a thorough patent search really requires thought and analysis. While we recommend getting a patent search with a qualified patent attorney, we also suggest that you do a preliminary patent search yourself because you will learn a lot about your product by doing this preliminary research. By doing a preliminary search yourself, you will also be able to compare the results to see whether you came up with any patents that were not on the patent attorney's list. Patent & Trademark Depository Libraries There are about 80 Patent and Trademark Depository Libraries throughout the United States - at least one per state. If you don't have a Patent and Trademark Depository library near you or in your state, you might want to consider taking a business trip to the nearest one if it's within your budget and if you have the time. By going there physically, you will have the direct assistance of the qualified department staff to help you with any questions or problems you may have. You can estimate at least one good full day's work at the depository library. Copyright searches as well as trademark searches can be done in these specialized libraries too. Internet If you're limited on time and money, you can also do a "preliminary patent search" right on the Internet. However please note that the U.S. Patent & Trademark Office says that "you can search patents on the web, but you can't do a patent search". However, starting out by doing a preliminary patent search on the web will familiarize you with the terms and general system so that you are prepared and better educated when you either go to the Patent and Trademark Depository Library , or to a patent attorney. Shopping for Patent Search Services When you shop for patent attorneys or patent searchers, ask what database they use to conduct their search. Many use a standard computer database, which searches for all patents issued after 1965 because - believe it or not - earlier patents aren't computerized yet. Patent and Trademark Depository Libraries also have access to the computer database (sometimes they charge a nominal fee of $25-50) so you can do a manual and computerized search at the same time. Most patent attorneys also do patent and trademark searches. However, there are also independent research companies that specialize in patent or trademark searches and other aspects such as trademark watch services (once you have a trademark or patent, this is a service that sends you a list of any new trademark or patent applications that are similar to yours), etc. Average rates for patent searches are about $500.00, and cost more if it's done more thoroughly than just through a computer search. If you check firms located in Arlington, VA or Washington D.C., they usually do their searches with the original patent records located at the United States Patent and Trademark and Office, which could be a more complete search. As with any service, we recommend that you call and request that brochures be mailed to you first, and ask them lots of questions about how they do the search and what databases and sources they use. Then start laying out your information so you can compare all of the services at a glance. Avoid the Pitfalls As you research patent search companies, be aware that you might end up contacting what are known in the industry as "invention scam operations" which will offer to not only do the patent search, but also do an evaluation, file the patent, market the product, get it licensed, and basically offer to do it ALL for their clients (for escalating fees, of course). The only way to distinguish between companies is to gather information first, and determine whether the company's mode of operation fits the pattern of these types of operations. Use this link to search the scam list , type in "Invention" then click on the search button to view companies that have been reported for various infractions. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page As a start, you can do your own "preliminary patent search" at the IBM patent server located at: http://www.delphion.com/ There is an online Patent Search Tutorial (see more info on this below) that takes you step-by-step to teach you the basics of doing a patent search. It is at: http://www.lib.utexas.edu/Libs/ENG/PTUT/ptut.html However please note that the U.S. Patent & Trademark Office says that "you can search patents on the web, but you can't do a patent search." So, be sure to contact the closest U.S. Patent & Depository Library nearest you and speak with a qualified and trained staff person. The U.S. Patent & Trademark Office has web site information on their Patent & Depository Libraries (PTDLs.) It has general information about the mission, history and background, announcements, frequently asked questions, services, and publications. It is at: http://www.uspto.gov/go/ptdl While the U.S. Patent & Trademark Office does not have the capability at this point to communicate by email, you can contact them by mail or fax for any questions or comments about the services that it offers: United States Patent and Trademark Office Fax: (703) 306-2654 The Patent Searching Tutorial teaches the basics of patent searching. The specifics were written for patrons of the Patent and Trademark Depository at the Richard W. McKinney Engineering Library, the University of Texas at Austin. Although some of the instructions given here may be unique to the McKinney Engineering Library and the focus of this tutorial is the Cassis system, the fundamentals of patent searching remain the same for any location. By following this tutorial, you will learn how to conduct an invention search, and by the time you are finished, you should be able to conduct a basic search to determine if your invention has already been granted a patent in the U.S. This tutorial will take you step-by-step through a very simple invention search. You can expect your search to be more difficult and more time consuming than this search. Links will be provided throughout this tutorial to sites on the World Wide Web with equivalent patent searching capabilities for anyone not using a Patent and Trademark Depository Library. We will include explanations of how these web-based tools might figure into a search strategy, and describe some of the benefits or pitfalls you might encounter while using them. Instructions on the use of these tools are found at the individual sites. We will start with the premise that we have invented a bib for a hospital patient. In order to conduct a patent search we need to identify the classifications that your invention falls under. To do this, it's important that you learn about how the classification system works. In order to familiarize yourself with the patent classification system, we suggest you read U.S. Subject of Invention Searching. For more information, you may also want to read the sections on "Invention Searching" in David Pressman's Patent It Yourself. When searching the Index to Patent Classifications, remember that inventions are classified by how they work, not by your intended use. Index to Patent Classification The first step will be to look at The Index to U.S. Patent Classification. This is the alphabetical subject index to the Manual of Classification. The Index is also available on the Assist Disc of the Cassis CD-ROMs, we find that using the Index in its paper format is easier. We need to think of common terms describing our invention, its function, effect, end-product, structure, and use. We will look up the word "apron." When we first think of the word "apron," most of us think of the garment protector, however we notice under the heading "Apron," that there are many types of aprons listed. This is one of the reasons we do not search by key words, because while searching for the garment patents, we would have to weed through patents for the vending machine aprons, the dump car aprons, and the vehicle fender aprons. There are three types of patents. The most common type of patent is a "utility patent." This is one in which the invention works in a new way to perform a useful function. Patent searchers are frequently confused when they see Classifications or Patents that begin with "D." These cover design patents. A "design patent" is one in which the invention is purely visual; it is based solely on the look of the item. The third type is for "plant patents." These offer patent protection for plants that have been asexually reproduced. Our apron would be a utility patent, because our idea has a utilitarian function, so we don't look at the headings under apron that say "design." We will need to conduct our search a little differently if we think our patent may be a design patent. We want to look at patents for an apron that is apparel; therefore we will be looking at Class 2 and Subclass 48. The plus sign (+) next to the 48 indicates that when we get to the next step, looking at the Manual of Classification, we will want to look around at the subclasses located near Subclass 48, in Class 2, for other, closely related, classifications. We will note the class and subclass numbers, 2/48, before continuing to the next step, looking at the Manual of Classification. The Index to U.S. Patent Classification is available online on the SunSite from the University of North Carolina at Chapel Hill. Sometimes using the "Find" command, under the Edit pull down menu can be helpful in searching for one word in a large body of material. We find that most people prefer using the Index in paper form, if it is available to them, because it is easier to browse this way. We will note the class and subclass numbers, 2/48, before continuing to the next step, looking at the Manual of Classification. Please download and open acrobat file psearch.pfd Manual of Classification Although the Manual of Classification is available through the CASSIS ASSIST disc and from the United States Patent and Trademark Office, we find it is most convenient to use it in its book form. The Manual of Classification comes in a multi-volume set. These books are not labeled with the Classification range, however, they continue as high as the 900s, so we can make an educated guess as to which book will contain a given Classification number. We are looking for Class 2, so we can guess that we will find this in the first volume. After paging through some introductory material, we find Class 2, the class for Apparel. Now we need to look for the Subclass. As we look down the listing of subclasses we notice that at first they appear to be in numerical order, but then they jump out of order, and then back in order again. The reason for this is that over time the contents of a given subclass became too large to be easily manageable, as more inventions were patented, and the subclass was divided into two or more appropriate subclasses. It is the arrangement in which the subclass number is listed that is important, not the subclass number. So we scan the list until we locate our subclass, Subclass 48. Now we need to think about that plus sign (+) that we saw in the Index of Classification, the one that means we need to look around Subclass 48. Notice the system of dots that appear in front of the words with the Subclass number. The heading, GARMENT PROTECTORS, has no dots. It is a Main Line Class. Apron has one dot; that means it is a more specifically defined classification related to the classification before it with no dots. Therefore, Apron, in this section of the classification system, is a kind of garment protector. Infant's bib has two dots. It is a subset of the item before it with one dot; an infant's bib is defined by the classification system as a kind of apron. Next we have three items with three dots; these are all kinds of Infant's bibs. It is possible for an infant's bib to be classified under 2/48 if there are aspects of that classification in the invention. We will want to consider the various aspects of our apron to decide if we want to investigate any of these other classifications and make a note of those, which do interest us. Keep in mind that if our invention is not an infant's bib, but, for instance, a bib for a hospital patient, we would also need to consider patents that are classified under the Class/Subclass group for "infant's bib," 2/49.1, because it works the same way as an infant's bib. It is not our intended use that matters, but how the invention functions. The Manual of Classification that is not currently available online through the USPTO, but the same information can be accessed through the Classification Definitions. Be sure to use the Help on Classes provided in Tips on Fielded Searching. Under some circumstances we might need to revise our search strategy at this point and go back to the beginning. If at this point, we can identify a classification, which seems like a good match for our invention, we are ready to continue to search using the information provided through the CASSIS database from the United States Patent and Trademark Office. Using CASSIS See file psearch.pdf There are several Patent discs in the CASSIS database. You will be searching three of them for your invention search: Patents ASSIST, Patents Bibliographic Information, and Patents Classification information. In order to use the information available on the CASSIS CD-ROMs you will need to learn how to access it. At the McKinney Engineering Library, we have two computers on which you can perform your search. One computer has the discs already loaded onto it, the other computer you will need to load the discs yourself. This is very easy. If there is already a disc in the drive, you will need to remove it by pressing the EJECT button. Do not remove the disc from its case. Then with the arrow forward, push the disc you need to look at into the top drive. From this point on, accessing the information is the same from both computers. With the mouse click on the name of the disc you need, such as "Patents ASSIST". This will open the information on the disc. You will see a screen with information such as the origins of the disc, dates of coverage, and a list of the items available on the disc. Use the arrow keys to move the highlighter bar to the item that interests you and press Enter. You may see a red box with the instruction: From here the screen accessed will vary depending on which disc you are using. For your invention search the first disc you will want to look at will be the ASSIST disc. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page The US Patent and Trademark Office (PTO) now offers World-Wide Web (Web) access to separate bibliographic and full-text patent databases. Understanding the limitations of these Web databases can help you avoid significant problems. Prior to using the PTO's patent databases on the Web, it is critical that you review the following information. These databases cover the period from the first US patent, issued in 1790, to the most recent weekly issue date (usually each Tuesday). US Patent Classification data in both the Full-Text and Bibliographic Databases (Current US Classification [CCL]) has been updated to reflect the most current Master Classification File (1 November 2000), and may not match the classification data which appears on the patent full-page images (i.e., the printed patent.) Changes to patent documents contained in Certificates of Correction and Re-examinations Certificates are not included in the text of the patent databases, but are included as full-page images at the end of each patent's linked image pages. Assignment changes recorded at the PTO are not reflected in the text or image portions of either of the patent databases. If you have any questions about the patent application process, the PTO strongly recommends that you consult with a registered patent attorney or agent. The PTO cannot recommend attorneys or agents. For information on registered patent attorneys and agents, see Patent Attorneys and Agents Registered to Practice before the PTO. Additional information about the patenting process is available from PTO's Web site and at Patent and Trademark Depository Libraries located throughout the country. The fact that an invention cannot be found by searching in the PTO's patent databases does not mean that the invention is patentable. Both of the PTO's patent databases begin with patents granted since 1976. A complete patentability search must consider all prior art, including earlier patents, foreign patents and non-patent literature. Please note that PTO does not record or log the parameters of search requests submitted to these databases. Such uncollected information has thus never been disclosed through sale or FOIA request, intentionally or otherwise, to any third party. PTO does not plan to change this operational policy. These databases are intended for use by the general public. Due to limitations of equipment and bandwidth, they are not intended to be a source for bulk downloads of PTO data. Bulk data may be purchased from PTO at cost (see the PTO Products and Services Catalog). Individuals, companies, or IP address blocks who deny service to the general public by themselves generating unusually high numbers of requests, whether generated manually or in an automated fashion, may be denied access to these servers without notice. To visit the USPTO and learn more about Patent searches click here: http://www.uspto.gov/patft/index.html Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page Copyright & Fair Use http://fairuse.stanford.edu/ IBM Intellectual Property Network
http://www.delphion.com/ STO's Internet Patent Search System
http://www.bustpatents.com/ U.S. Copyright Office http://lcweb.loc.gov/copyright/ U.S. Patent and Trademark Office
http://www.uspto.gov/ |
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