Patents and Trademarks
As librarians, many of us are uncomfortable dealing with questions about intellectual property, especially when they relate to issues concerning patents and trademarks. We tend to think of these as part of the specialized research and development activities within commercial companies and therefore something that is not of immediate interest to research libraries. Of course, there are librarians who are highly skilled patent searchers, though most of them work in special libraries, and most of us in academic institutions would probably be happy if the work remained there.
However, we now live in a world where universities routinely seek patents based on the outcome of research activities and researchers often form private companies to market those discoveries with the support of the university administration. As librarians we are often asked to support these activities by providing access to resources on patent law and to seek out existing patents that might compete with new applications. A brief discussion of patents and trademarks may help with this endeavor.
Patents and trademarks are distinct forms of intellectual property protection, though their purposes are often confused. A patent generally grants the inventor the right to exclude others from using the patented discovery for a period of time, making it the protected intellectual property of the inventor. A trademark is a word, name, symbol, or device used to distinguish a product from other products and does not involve protection of intellectual property in the way that patents do.
In the United States there are three kinds of patents — utility patents, design patents and plant patents. According to the U.S. Patent and Trademark Office, "1) utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof; 2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and 3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant." [1]
Whenever we think or talk of "patents" in the context of intellectual property we are almost always talking of utility patents. In the calendar year 2004, the U.S. Patent and Trademark Office granted 164,293 utility, 15,695 design, 1,016 plant and 298 reissue patents and 20 statutory invention registrations, for a total of 181,322 patent documents for the year (over 350,000 applications were filed.) Foreign-resident inventors claimed a 48.1 percent share of all U.S. patents issued in 2004. [2]
Patents have become an indispensable part of commercial development in all areas of technology from electronics to drugs and gene therapy. Any attempt to develop commercial products based on new research or design must now involve a patent (or trademark) search in order to substantiate the novelty of claims in the patent applications necessary for continued commercial viability of the endeavor.
Patent searching is important for anyone involved in competitive analysis of corporate business activities. Where is a company heading? Where is it concentrating its resources? From which areas does it expect good returns? Much of this can be extrapolated from a patent search. Now that business methods and software algorithms can be patented it is also a good way to keep up with technology advances. Patents contain detailed technical descriptions of their subjects and also show their correlation to comparable inventions. In the strictest sense they are unique sources of information.
However, there are problems with using patents as a source of information. One is that the language is probably deliberately as obscure and broad as it can be made. Another is that a company may not always file, as assignee, under its own parent name, thus making it difficult to track exactly what is happening.
To make the most of patent research, a librarian must make the best effort to understand concepts and terms and must develop the tracking talents of a good hunting dog. Language skills could also be necessary if one needed to search patents from other countries. Checking patents to find the major researcher and then searching by that name may also retrieve a sequence of information. In short, a librarian who is unfamiliar with the specialized skills of a patent searcher can still perform effective searches by drawing upon the general talents developed in other search areas. We do not give up if articles on a particular subject are not easily found — instead we continue the search using new words, phrases and concepts. It is the same with basic patent searching.
Another problem associated with patent research is that most academic libraries do not have subscriptions to patent databases and in the past have had to rely on barely adequate free resources. For example, those of us with access to a government documents collection would scour the gazette and other print resources for both patents and trademarks. Now, thanks to the Internet, we all have good access to patent depositories, some of which are detailed below.
For U.S. patents, the place to begin is www.uspto.gov. One should check the guides to searching and the glossary for help. Patents from 1790 through 1975 are searchable only by Patent Number and Current US Classification but later patents can be searched using dates, words in the abstracts, inventor name, assignee name, country, state or city, title and much more. US trademarks can be searched using the Trademark Electronic Search System (TESS) that contains more than three million pending, registered and dead federal trademarks. [4] If the trademark contains a graphic you will need to search for it by using a design code. The design code manual is located at tess2.uspto.gov.
Unfortunately patents and trademarks do not stop at the U.S. border so we must be prepared to carry out international searches. The Madrid Agreement concerning the International Registration of Marks has 78 members and a searchable database. One may search Europe's Network of databases, although 35 training modules to help one learn how to search seems a little excessive! This site also links to other patent databases.
Patent and trademark searching is important to inventors and researchers, as well as to those undertaking the task of competitive analysis. This research is not always easy, but the techniques used in other searching can be utilized, and easily accessible Internet sources can make the process easier for all.
Notes
- U.S. Patent and Trademark Office.
http://www.uspto.gov/web/offices/pac/doc/general/#patent - U.S. Patent and Trademark Office. Patenting Trends Calendar Year 2004. 9 Feb 2005.
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/pat_tr04.htm - Jungersen v. Ostby & Barton Co., 335 U.S. 560, 572 (1949) (dissenting)
- Taken from the TESS update news at
http://tess2.uspto.gov/bin/gate.exe?f=tess&state=bhs4t0.1.1
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