Technology Protection: Searching U.S. Patent Resources

Inventors of advanced technology products desire protection for their inventions. One type of protection is through a legal document, called a Patent. How do inventors conduct an effective patent search to determine the patentability of their invention? This presentation will describe the steps for an effective patent search.

Inventors of technology based products normally desire protection for their inventions. The U.S. Patent and Trademark Office has been established by Congress to provide inventors protection for their novel inventions. How do inventors conduct an effective search to determine the novelty of their invention? This presentation will describe the steps for an effective patent search.

Introduction

I am the Patent and Trademark Librarian at the Evansdale Library at West Virginia University. The Evansdale Library is the only U.S. Patent and Trademark Depository Library in the state of West Virginia. We have DVDs and other products from the United States Patent and Trademark Office (USPTO). We also have access to the USPTO databases. We provide reference assistance to inventors throughout the state.

The types of Intellectual Property Protection available to inventors of technology include Copyright ©, Trademark ®™, Trade Secret[1], and Patent. To make it clear to inventors the scope of protection offered through patents, this paper will review each of these types of protection.

Copyright © is “A form of protection provided to authors of ‘original works of authorship’ including literary…and certain other intellectual works, both published and unpublished.” It gives to the owner the exclusive right to reproduce the copyrighted work, prepare derivative works, and to distribute copies (among other things).[2] “Copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine[3].”

Copyrights are administered by the Library of Congress. The URL for their website is www.copyright.gov . The term of copyright is longer than that of a patent. For works originally created on or after January 1, 1978 the term is life of the author, plus an additional 70 years after the author's death. If the work was made for hire, its term is 95 years from publication, or 120 years from creation, whichever is shorter.

Besides a listing of recent copyright owners, the Copyright website contains useful forms. These forms include Circular 61 Copyright Registration for Computer Programs and Form TX. When submitting software for copyright protection, one should note that, “For published or unpublished computer programs, send one copy of identifying portions of the program (first 25 and last 25 pages of source code)…[4]>”

Technology-based companies may consider copyrighting software, manuals, and training videos.

Trademark ^{®™ SM}

A trademark is “a word, name, symbol, or device that is used in trade with goods to indicate the source of goods and to distinguish them from the goods of others[5].” In contrast “a service mark is the same as the trademark except that it identifies and distinguishes the source of service rather than a product[6].” Often the word “mark” is used interchangeably for all types.

Trademarks are administered on the federal level by the United States Patent and Trademark Office (USPTO). Trademarks can also be granted on the state level (please refer to individual states), which means it is only protected within the given state, or on the international level through the Madrid Protocol (see http://www.wipo.int/madrid/en/ ). If you live in the U.S., then an international application must be filed initially with the USPTO which forwards the application on to WIPO.

Examples of trademarks include “mac” (Apple Computer), “intel inside”. Examples of service marks include FedEx (a package delivery service) and Blockbuster (a video rental service). A trademark prevents others from using a confusingly similar mark, but it does NOT prevent others from selling the same goods and services under a clearly different mark[7]. So for example, there are various package delivery services including FedEx, UPS, and the U.S. Postal Service.

“Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration, and files all necessary documentation in the USPTO at the appropriate times[8].”

A technology-based company may consider trademarking a business name, a product, or a business service.

Patent

“A patent is a property right granted by the Government of the United States of America to an inventor ‘to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States’ for a limited time in exchange for public disclosure of the invention when the patent is granted[9].”

Not everything can be patented. The invention must meet four criteria for patents: novelty, usefulness, unobviousness and full disclosure. See http://www.uspto.gov/web/offices/com/iip/data.htm . The three types of patents are Utility, Design, and Plant[10]. A utility patent is any new, useful, and nonobvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. A design patent is a new, original, and ornamental design for an article of manufacture. A plant patent is an asexually reproduced, distinct, and new variety of plant. The terms of utility and plant patents are twenty years from date of application. Design patents have fourteen-year terms from date of issuance.

Patents are administered by the U.S. Patent and Trademark Office (http://www.uspto.gov). Items that a technology based company might consider patenting: computer software, computer components (hard drive, mouse, flash memory), pharmaceuticals, a new fuel cell, a new case for a computer.

The majority of this talk is on patent searching. Since one of the criteria for a patent is novelty, you must search to locate existing patents that relate to your invention. Unless a patent is novel it will not be granted. Thus prior art must be searched and compared to the proposed invention to assess what aspects of the proposed invention constitute novel material. Aside from U.S. Patents, other prior art that must be considered are published U.S. Patent Applications, foreign patents, trade publications and journals. You need to look through each of these prior art databases, find similar concepts, and state why your invention is unique.

There are several available search tools. The Index to U.S. Patent Classification and the Manual of Classification are available in printed format at a Patent and Trademark Depository Libraries (PTDL) of which Evansdale Library at West Virginia University is one.

Also located at a PTDL is the CASSIS stand-alone computer station. This station includes search tools and DVDs. The CASSIS2 software allows searching using keyword, class, etc. DVDs called USAPat and USAApp contain actual images of patents or trademarks from 1790 to the present. You will need a patent or trademark number, however, to retrieve the images. The advantages to using this system is that you can print out an entire patent at once, save the entire patent to disc and also create various reports.

Another location for search tools is on the USPTO Web site http://www.uspto.gov. This website includes the full text of patents from 1976 and images of patents from 1790 to present.

The final location for search tools that I would like to mention is the WEST database (Web-based Examiners Search Tool). This tool is available at USPTO Depository Libraries, including the Evansdale Library. WEST provides access to foreign patents and will soon contain the full text of Patents from 1920.

Often inventors come to me and say that they have searched on the USPTO website using keywords and have not come up with a single patent that is even similar to their invention. We do not live in an insolated world: our inventions are usually within context of something else we are familiar with. Almost all inventions have at least one cited patent reference and many have at least seven. So why isn’t a key word search effective? Often similar patents do not use the same words that you are using to describe your patent. Perhaps terminology has changed for this technology over the years, or perhaps words you would use are not used by the other inventor. In order to address this problem, the patent office has devised a classification system. Classification searching is the most effective method for searching and locating similar patents.

Classification

Patents are grouped in Subject Areas called Classes and Subclasses, e.g., 562/891 with “562” being the class and “891” the subclass. Each Class and Subclass have definitions associated with them. Classes and Subclasses are used to classify the characteristics of an invention--its essential function (or what it does), the essential effect or basic product resulting from the invention, the physical structure of invention (what it is made of e.g. titanium), and/or the intended use of the invention.

There are three major tools to help you access classifications and help you decide how your invention should be classed. The first is the Index to the U.S. Classification. You use keywords to use the index to find an invention class. Secondly the Manual of Classification shows how the Classes and Subclasses relate to one another. The entries are indented. Recall how in high school you had to outline a paper using first roman number “I”, then capital “A”, the Arabic “l”, and then small “a”. Third, after consulting the Manual of Classification you should look at the class and subclass definitions. You need to determine if invention can be defined by the class and subclass definition.

The Patent and Trademark Depository Library Program (PTDLP) has devised a recommended “7 Step Strategy” for conducting a patent search[11]:

Your first step is to find keywords. You need to ask, “what am I looking for?” and ask these four basic questions:

The USPTO Homepage is arranged with Patents and Trademarks on the left hand-side. Click on “Search” and the Patent Main Search Page comes up. This page is arranged with Issued Patent Searching in the upper left and Published Applications searching in the upper right. The bottom half contains various tools and helps. “How to Access Full-Page Images” contains a link to assist you in downloading free *.TIFF viewers needed to view full text images of patents. “Tools to Help in Searching by Patent Classification” contains important tools for searching.

The first tool we begin with is the Index to US Patent Classification. At the bottom of the upper section there is a tool bar which contains the following links:

If you click on the middle link “USPC Index”. This link will bring up hyperlinks to the alphabetical listing of the Index.

Do NOT use the FirstGov search boxes to conduct a search. This search engine is not very effective for the type of searching we wish to do.

Now let’s say you have come up with a new type of computer hard drive. You’ve done your brainstorming and come up with various keywords including computer and disc. If you click on “C” listing and scroll down to “Computer” you will see the following entries:

Since this invention has to do with function instead of design, you note the class and subclass 360/135.

Your second step is to check the Manual of Classification. You can do this by clicking on the hyperlinks or by going back to the Patent Classification home page and entering data in the boxes under, “A. Access Classification Info by Class/Subclass.” We’ll enter 360 in the first box and 135 in the second, select “Class Schedule (HTML)” for now and click “SUBMIT”.

Note that disk is under “RECORD MEDIUM”. If you click on the red “P” you will get a complete listing of all the patents for this class and subclass (360/135). For now click on the hyperlink for “135” and we will go on to Step Three which is to read the Class and Subclass definitions.

When reading Class and Subclass definitions it is important to pay attention to indents and references to previous subclasses. You need to read the definition thoroughly to make sure that your invention falls under that particular class and subclass. The definition for disk for example says “Disk--This subclass is indented under subclass 131. Subject matter wherein the record is in the form of a disk.” This means that you need to look at subclass 131 as well as refer to the class 360 definition. Once you have decided that this class is perhaps a class and subclass by which your invention could be defined, it is time to move on to Step 4-- Retrieve and Browse Patent Titles and Abstracts.

To retrieve and browse patent titles and abstracts you can back up to the listing with the red “P” hyperlink. This will bring up all patents under the class and subclass 360/135. Read through the titles find pertinent titles and explore.

This brings us to Step 5--Retrieve And Review All Patent Documents Within Relevant Classifications. While scanning through the listing, let’s suppose we choose 6,686,025, “Magnetic recording medium”. When viewing the full text of a patent, you can click on the red “Images” box (the last box). This will retrieve the images of actual patent with all its figures.

Step 6--Study Relevant Patent Documents. In order to study relevant patents you need to be aware of the following important fields in a patent document: Patent Number, Title, Inventor, Classification information, References Cited, Abstract, Drawings, Background Description, Claims. The classification information gives you other possible classes to search. The “References Cited” section provides you with related patents (it is probably important to look at these if the patent you are looking at is similar to your invention). The claims section is the “meat” of the invention, and is the legal definition of any particular invention.

When searching you should also be aware that from the advanced search screen there are various fields available to search. Patents issued from 1790 through 1975 are searchable only by patent number and current US classifications on the USPTO website. However, patents issued after 1976 are searchable by over 30 fields. The fields available to search include

Background to Software Patents

Since this is a technology conference, I’d like to give you a little background on software patents as a specific example. In the 1998 court decision, State Street Bank and Trust Co. v. Signature Financial Group, Inc., the Federal Appeals Court “held that a computerized process for transforming data is within the realm of patentable subject matter so long as it ‘produces a ‘useful, concrete and tangible result’’.[12] The result of this decision is Business Method patents some of which are software patents. The classes have been recently restructured into the 700 classes. Over 20,000 software patents are granted each year[13] and today software patents are over 15 percent of all patents granted for each year[14]. Useful websites dealing with software copyrights and patents are the USPTO's patent business methods http://www.uspto.gov/web/menu/pbmethod/, the Software Patent Institute http://www.spi.org/, the international law firm of Ladas & Parry primer on the protection of software by copyright and patents http://www.ladas.com/Patents/SoftwareProtectionIndex.html and the American Intellectual Property Law Association www.aipla.org.

Important things to remember when developing an invention are 1) keep a log or a journal of the development of your invention, 2) do not share with anyone your invention idea, 3) consult with a patent attorney once you believe you have a viable invention. It is important to consult with a patent attorney or agent in order protect all of your rights. A listing of patent attorneys and agents can be obtained at http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html . If you are interested in an attorney or agent only from West Virginia, just type in “wv” in the search box.

If you need additional patent reference assistance fell free to contact me using e-mail at the address listed above.

References

[1] A trade secret is “Information relative to an industrial process or the conduct of a business, known only to the owner and those of his employees to whom it is necessary to confide if the fact known is to be made of value or, of any rate, not available to the trade generally.” In William S. Anderson ed., Ballentine’s law dictionary, 3^rd ed. (Rochester, NY: Lawyers Co-Operative Publishing Company, 1969), 1289.

[2] United States Department of Commerce, Patent and Trademark Office, General information concerning patents. (Washington, DC: United States Patent and Trademark Office, n.d.), 2.

[3] Ibid, 2.

[4] United States Copyright Office, Copyright registration for computer programs, information circular, no. 61, http://www.copyright.gov/circs/circ61.html#deposit (16 July 2004).

[5] General information concerning patents, 2.

[6] Ibid., 2.

[7] Ibid., 2.

[8] United States Department of Commerce, Patent and Trademark Office, “Maintaining A Federal Trademark Registration,” Basic Facts About Trademarks, http://www.uspto.gov/web/offices/tac/doc/basic/maintain.htm (16 July 2004).

[9] United States Department of Commerce, Patent and Trademark Office, “What is a patent?” Inventor Resources, http://www.uspto.gov/web/offices/com/iip/data.htm (24 June 2004).

[10] General Information Concerning Patents, 2.

[11]United States Patent and Trademark Depository Library Program, “7 Step Strategy.” (Patent and Trademark Office, United States Department of Commerce, Arlington, VA, 2004, photocopy). A similar document is available on the web at http://www.uspto.gov/web/offices/ac/ido/ptdl/step7.htm

[12] John M. Conley, “The international law of business method patents,” Economic Review 88(4), 15. http://www.frbatlanta.org/invoke.cfm?objectid=9F876659-B14A-4B57-3C463FD92F05219E&method=display_body#conley (16 July 2004).

[13] James Bessen and Robert M. Hunt, Working Paper No. 03-17. An empirical look at software patents, (Philadelphia, PA: Federal Reserve Bank of Philadelphia, 2003), 2, http://www.researchoninnovation.org/swpat.pdf (19 Feb 2004).

[14] Ibid., 5.