1. How to Find Intellectual Property
Information in Chemistry
John Meier
meier@psu.edu
Penn State’s Patent and Trademark Resource Center
http://www.libraries.psu.edu/psul/researchguides/patents.html

2. 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

3. 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”

5. 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

6. 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

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

8. Criteria for patentability
• Utility
- must be useful, or have a use
• Novelty
- must be new (12-month grace period)
• Non-obvious
- the difference between existing art and
the invention must be sufficiently great
as to warrant a patent

10. Novelty and Priority
1. 0 month, Green invents
2. +1 month, Smith invents
3. +6 months, Smith publishes
4. +3 months, Green files patent application (10
months after invention)
5. Green`s application fails because Smith`s paper is
prior art

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

12. How long for a patent to be
approved?
• Application filed to first response by USPTO
28 months (on average)
• Total time to issue of a patent
34 months (on average)
Times vary by area of technology, you can find
out the average for your area on the USPTO
website.

13. 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
13

14. 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 are very slow and
very expensive, costing millions of dollars
– Courts may award lost profits, damages, and legal fees to
the plaintiff (patent holder)

15. 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 order to compete with Apple in the mobile phone
market in August 2011 Google purchased Motorola
Mobility for $12.5 billion USD, getting over 17,000
patents.

16. “Prophetics” in Patents
• Since there is no requirement that
experimental evidence or working models of
an invention be included in a patent
application, prophetic patents are routinely
granted for inventions that have yet to be
tested
• In chemistry a newly identified substance can
be described even if it has not yet been
produced

17. 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

18. 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

19. 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/

20. 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”

21. Chemistry Databases
• Scifinder Scholar
– Patents included in literature results
– Next day patent data international patent offices
– Selected US patents back to 1828
• Reaxys
– Patents included in structure and literature results
– US patents from 1976 and some back to 1920, and
World and European patents from 1978
• SureChem
– Free website with structure searching

22. 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
– Writing chemistry patents and intellectual
property: a practical guide
– Patent Pending in 24 Hours