Patent Handout

CINF WORKSHOP: Teaching Chemical Information, August 18, 2002, Boston

 

What Students should know about Patents

It is estimated that 70% of chemical information is only to be found in PATENTS!

 

General Patent Information

 

A patent is a legal document that secures the owner the right to exclude others from making, using or selling the claimed invention for a period of time. It may also be considered a contract between the inventor and the government in which the inventor agrees to disclose the invention in exchange for certain rights (quid pro quo).

To be patentable the invention must fall within one of the following statutory classes:

  • Utility Patents: May be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof. Pertains to chemical, mechanical, electrical or physical patents. Statutory period lasts typically 20 years from filing date (prior to 1994 only 17 years were granted). Be aware of the fact that companies - especially pharmaceutical companies - file for extensions of the patent life. Up to 3 years can be granted.
  • Plant Patents: Covers asexually or sexually reproducible plants. Statuary period is 17 years from issuance.
  • Design Patents: Covers the unique, ornamental, nonfunctional or visible shape or design of an object. Statutory period is 14 years from issuance.


To receive a patent the invention must meet the following three criteria:

·         Usefulness: Having some practical utility; fit for some desirable, practical or commercial purpose.

·         Novelty: The concept that the claims must be totally new. The invention must never have been made public in any way, anywhere, before the date on which the application for a patent is filed. In the U.S. this is determined by the date of invention.

  • (Non)-obviousness: The invention must not be obvious to an observer who is "skilled in the art".  The concept that the claims defining an invention in a patent application must involve an inventive step if, when compared with what is already known (i.e. prior art), it would not be obvious to someone skilled in the art.

 

Main Parts to a Patent

 

Front Page Information:

Patent Number                          Title                              Date of Patent

Inventor                         Assignee                       Application Number

Date of Application                     Cited References           US Classification Numbers

Intl. Classification Code              Abstract

Descriptions                             Claims                         Drawings


Important Patent Terms (compiled from several, different Patent Glossaries)

 

Basic Patent: Since patents for a particular invention may appear at different times in a number of countries, abstracting and indexing services generally have adopted the practice of abstracting only the first patent issued, called the basic patent.

Patent Family: consists of all the equivalent patent applications corresponding to a single invention, covering different geographical regions.

Prior Art: In a broad sense, technology that is relevant to an invention and was publicly available (e.g. described in a publication or offered for sale) at the time an invention was made. In a narrow sense, any such technology which would invalidate a patent or limit its scope. The process of prosecuting a patent or interpreting its claims largely consists of identifying relevant prior art and distinguishing the claimed invention from that prior art.

Kind Codes: The letter, often with a further number, indicating the level of publication of a patent.  Kind Codes are different for each country.  Examples: US Kind Code A: Granted US Patent (issued prior to Jan. 2, 2001); US Kind Code B: Granted Patent (no pre-grant publication; issued on or after Jan. 2, 2001); German Kind Code C: Patentschrift (patent).

 

IPC -  International Patent Classification: IPC is an internationally recognized classification system, which is controlled by the World Intellectual Property Organization (WIPO) and assigned to patent documents by Patent Offices. There are 8 sections (A - H) and these sections are further subdivided into classes. Each Class consists of the Section letter, followed by two digits.

·         International Patent Classification codes in 5 languages http://www.dagostini.it/patclass/patclass

US Patent Classifications: Classification system assigned to patent documents by the United States Patent and Trademark Office.

·       http://www.uspto.gov/go/classification/

·       http://www.micropat.com/classdef/MANUAL/main.html

 

Markush Structures:  Chemical patents often have claims made for a whole family of compounds. These are called Markush claims, after the first inventor to successfully claim a generic structure. The inventor need not have tested or even prepared all members of the family -- just make a chemically plausible claim of equivalence.

 

Maintenance Fees: In the United States maintenance fees are to be paid at 3.5 years, 7.5 years, and 11.5 years after the original grant of a patent, while other countries require annual maintenance fees.  If one fails to pay the maintenance fees the patents will no longer be upheld.

 

Publication of Patents

 

US Patent applications publish at 18 months from filing.  If you file for non-publication it will not publish but you must do this at the time of the filing and you must certify that the application is not being filed in any other country.  Prior to 11/29/2000 US patents were only published after they were granted.  Europe and Japan are also fast publishing countries – 18 months after the patent application filing date.

 

 

Information on Major Patent Issuing Agencies

 

US Patent Office is an agency of the U.S. Department of Commerce. The role of the USPTO is to grant patents for the protection of inventions and to register trademarks. Patent applications publish 18 month from filing date. Patents will have the code US.

European Patent Convention is a treaty primarily covering only Western European countries, which permits the applicant to file a single application with the EPO (European Patent Office) in Munich, Germany, and to designate any of the participating Countries. The EPO also publishes the patent application 18 months after the filing date, and examines and grants patents that are valid in the designated states. Patents will have the code EP.

Patent Cooperation Treaty (PCT) - this treaty facilitates filing of international applications of about 40 member countries. It permits the applicant to file a single international application, which will be equivalent to a national filing in each of the countries designated on the application. The PCT does not grant patents!

The PCT is administrated by the World Intellectual Property Organization (WIPO). WIPO publishes the unexamined application after 18 months, initiates the search report for prior art and then forwards the application and search report to the national offices of the designated countries. Patents will have the code WO.

Japanese Patent Office issues six types of patent documents. Most important are

  • Unexamined Published/"Laid Open" Application Numbers (Kokai)
  • Examined Published Application Numbers (Kokoku)
  • Granted Patent Numbers (Toroku)

For each type of these documents the Japanese numbering system uses an annual series and begins each year with document number 1. As a result, in the same year an identical number can be assigned to different inventions that are at different levels of publications. The only exception to this rule is Granted Patent Numbers, which use a continued series at number 2,500,001. Patents will have the code JP.

 

Resources and Books

 

Glossary of Patent Term

·         http://www.webpatent.com/content/glossary.htm

·         http://www.delphion.com/help/glossary

 

General Patent Information

·         Nolo Press http://www.nolo.com/ Patents, Copyrights and Trademarks. Good site to start if you want to know how to file a patent. Also accessible is an Encyclopedia for Patent Law and has links to other On-line patent resources as well as books and software pertaining to Patents.   


Books

An extensive list of books on patents is available from the PIUG Page http://www.piug.org/.
A short list of patent books for Scientists and Engineers is compiled below:

 

·         Patent Strategies for Business, 3rd Edition, Stephen C. Glazier, LBI Law & Business Institute, Waldorf, Maryland, November, 1997.

  • Kirk-Othmer Encyclopedia of Chemical Technology, Fourth Edition v.18; Patents, Literature Simmons E. and Kaback S., John Wiley & Sons, NY, p.102-156, 1996.
  • Patent Fundamentals for Scientists and Engineers Gordon, Thomas, T.; Cookfair, Arthur, S., Boca Raton, CRC Lewis, 1995.
  • Patents Handbook: a Guide for Inventors and Researchers to Searching Patent Documents and Preparing and Making and Application; Fred K. Carr. Jefferson, NC, McFarland, 1995.
  • Patents as Scientific and Technical Literature; Richard D. Walker, Metuchen, N.J, Scarecrow Press, 1995.
  • Patent Searching for Librarians and Inventors; Timothy Lee Wherry. Chicago, ALA, 1995
  • Successful Patents and Patenting for Engineers and Scientists Michael A. Lechter, et al., 1995.
  • Information Sources in Patents; Edited by C.P. Auger. London, Bowker-Saur, 1992
  • Patent Law for the Nonlawyer: a Guide for the Engineer, Technologist, and Manager; Burton A. Amernick. 2nd ed. New York, Van Nostrand Reinhold, 1991.
  • Understanding Chemical Patents; J. T. Maynard and H. M.Peters, ACS, 1991.

 

 

No Cost Patent Searching Sites

 

·         USPTO (US Patent and Trademark Office) Patent Databases http://patents.uspto.gov/index.html

Good site to search for most resent patents however it's only a bibliographic database and search interface is a bit cumbersome. The searchable database looks for front-page information from US patents issued from 1/1/76 to the Tuesday prior to today's date (U.S. patents are issued every Tuesday).  Simple and Advanced search modes are available.  You can download the full text images as PDF files - page by page only - but they are free!

 

·         European Patent Information http://www.european-patent-office.org/espacenet/info/access.htm Searches are based on the bibliographic data in patent documents, using an easy-to-operate search mask, which is not, however, suitable for more complex searches. You can download the full text images as PDF files - page by page only - but they are free!

 

·         DEPATISnet Information  http://www.depatisnet.de/

German site to search US-1973+, EP-1978+, EP-1978+, WO-1978+, WO-1978+, DE-1973+, DD- 1973+, AT-1973+, CH-1973+, FR-1973+, GB-1973+, JP-1973+, Patents and Applications are all in one site and then link to the full text patent. Website is available in English and German. You can download the full text images as PDF files - page by page only - but they are free!


·         SurfIP
Good site to search US-1790+, WO-97+, EP-97+,
CH, CA, Taiwan and Singapore Patents and JP patent abstracts. You may also combine the search with Internet Search Engines such as Google or Northern Light and Business Databases like Hoovers.  Interesting Site!  You can download the full text images as PDF files - page by page only - but they are free!

·         Delphion Intellectual Property Network (formerly the IBM Patent Server)
Search US Front Page Patents only. All other services are on a subscription basis only.

 

Fee-based Databases Aggregators: STN and Dialog

 

Both vendors provide access to a variety of databases that can all be searched together.  Unique features of STN Patent Databases: Chemical Structure access, transfer of patent numbers and codes from one database to another.  Both vendors offer several searching interfaces, ranging from command language to predefined search forms. (STN Web, STN Easy, Dialog Classic, Dialog Web, Dialog1)

 

Selected STN and Dialog Patent Files

 

The bolded database name refers to the STN database name and the italic file number refers to Dialog database name. For more information on the database content refer to the Database Summary Sheets for the STN databases and the Bluesheets for the Dialog Databases.

 

  • WPINDEX (File 351, 352) Known as the Derwent World Patent Index: Covers 40 patent issuing authorities. Patent family is grouped into one index.  Strong in mini abstracts, patent family and kind codes.
  • INPADOC (File 345) Covers 71 patent issuing organizations. Maintains individual records for each family member. Uses unique display formats to pull together all family members. Includes legal status for 40 issuing organizations.
  • USPATFULL (Files 652, 653, 654) Provides search access to all cited references form the front page of US patents. The inventor's cites within the document are searchable via free text.
  • EUROPATFULL (File 348) contains the complete text of patent applications and granted patents published by the European Patent Office since 1987.
  • JAPIO (File 347) English abstracts of Japanese unexamined published patent applications.

 

 

Other fee-based Patent Searching Tools

 

·         Questel Orbit http://www.questel.orbit.com/

·         Lexis-Nexis http://web.lexis.com/xchange/practiceareas/patent/default.asp

 

Other providers listed at http://www.epo.co.at/online/index.htm#patpro

 

 


Purchase Patents

 

·         Reedfax http://www.reedfax.com

·         British Library Patent Express http://www.bl.uk/services/document/patent.html

  • Your Local Patent Depository Library

 

Other providers listed at http://www.piug.org/vendor.html#bmDocDel

 

 

Other Intellectual Property

 

Copyrights - A copyright protects the writings of an author against copying. A copyright is a form of intellectual property right granted by the federal government for "original works of authorship." Includes software, musical scores, books, letters, and web pages. Gives author exclusive right to reproduce, sell, display distribute, or perform their work. It lasts the author's lifetime plus 70 years. For more information please see. http://www.copyright.com/

 

Trademarks - A trademark is a brand name that appears on packaging (word, name, symbol, or device that identifies a source of goods). Lasts 20 years and is renewable as long as it is in use.

 

Trade Secret - A trade secret can be any information not known generally in the trade that is used in business to provide an advantage over competitors. Trade secrets never expire as do patents and copyrights, and you don't apply for them. Trade secret rights can be obtained only by developing the information representing the trade secret and maintaining the secrecy of the information. The following types of information have previously been found to qualify as proper trade secret subject matter: 1. customer lists; 2. chemical processes and formulas; 3. algorithms and processes that are implemented in computer programs and the programs themselves; 4. designs, drawings, architectural plans and blueprints; 5. data compilations, business plans and methods of doing business; 6. manufacturing or repair processes and techniques.

 

 

 

 

 

 

Please don’t hesitate to contact me should you have any questions or suggestions.

 

Silvia E. Lee, MLIS

Symyx Technologies Inc.

3100 Central Express Way

Santa Clara, CA 95051

 

Voice: 408 330 3974

Fax:    408 492 9103

Email: slee@symyx.com

Web:  www.symyx.com