PATENTS, TRADEMARKS, AND IP
Getting Started with Your Research
WHERE DO WE START?
Has anyone else produced a similar product?
 Are there any patents are trademarks that could
prevent your production?
 Is there technology/products that exist that you
could license from another company?
 Are you going to be a domestic or international
company? Will your products be produced in the
US or a foreign country?
 If there are no complications, what do you want
to patent/trademark?
 Are you going to seek international
patents/trademarks?
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WHAT’S THE DIFFERENCE?
Trademark: registering a component of your
brand that identifies your company/service from
competitors in a similar business.
 Patent: legal protection that ensures the creator
of a product/service has exclusive rights to create,
use, and distribute said product. Legal steps can
be taken to stop others from infringing on patent
rights.
 IP: a creation by an individual in any medium. It
is a representation of an idea, and gives the
creator exclusive rights to create/reproduce/
manufacture/distribute that idea.

HOW DO I GET A PATENT?
Background research
 Fill out an application
 Invention must be:
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New
Useful
Non-obvious
Written and drawn description included with
application
Not a slight variation on another product/service
Not a slight variation on an existing patent for a nonrelated product/service
http://www.uspto.gov/patents/process/index.jsp
SEARCHING FOR PATENTS
Recommended routes for inventors/entrepreneurs
include Patent attorneys, local
guilds/membership groups, patent search firms,
University IP Offices, and research specialists.
 It is a highly specialized form of research
 Lawyers are most recommended but can be
extraordinarily expensive. If you are actually
going to produce a product, at some point legal
council should be considered.
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CLASS PROJECT
Basic searches using Verified Resources:
 You have an idea for a new home thermostat.
Current home thermostats only control heat &
cooling. Yours would control the entire home
environment. It would monitor inside air and
control humidity, air pollutants, and
temperature. ENVIRO Stat would control all the
enabling variables that affect the inside air such
as window temp, roof temp, and air pollutants.
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What do we want to know?
WE FOUND A PATENT – NOW WHAT?
Discuss licensing rights with the company
 Innovate a new way to deliver your product
 Check the patent information for exclusivity
clauses
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LIMITATIONS OF PATENTS/TRADEMARKS
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Each country needs a patent
Production
 Sales
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Web domains need to be registered in each
country
 Employee contracts in each country need to be
specific as well
 Specific descriptors may not be validated in each
country – i.e. cloud computing
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MORE READING
Reference Universe
 Encyclopedia of Small Business 3rd Edition
 Online IP Training:
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http://www.stopfakes.gov/business-tools/sme-module
 http://www.uspto.gov/
 http://www.uspto.gov/video/cbt/ptrcsearching/
 http://gpsn.uspto.gov/
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Harvard Business Review, many case studies
 Scholarly journals – E-mail Gabrielle at
gannala@luc.edu for some suggestions.
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TAKE A LOOK AT YOUR BUSINESS/PRODUCT
Conduct an IP Audit
 What do you want to patent/trademark?
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Logos
Packaging/distinctive look
Software
Hardware
Trade Secrets
Discussion of products under development
 Privacy concerns
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Employee creations
Should include all assets that are owned by the
company
DESCRIBE YOUR PRODUCT
LET’S LOOK AT A PATENT
http://appft.uspto.gov/netacgi/nphParser?Sect1=PTO1&Sect2=HITOFF&d=PG01&
p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.html
&r=1&f=G&l=50&s1=%2220130167035%22.PGN
R.&OS=DN/20130167035&RS=DN/20130167035
 Use the UPCS in a search:
http://www.uspto.gov/web/patents/classification/
 Note the Index/UPCS, Patent Numbers, CIC
(current international class) numbers, and
References Cited Sections
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WHY IS THE USPC BETTER THAN A
KEYWORD?
Concepts are often vague
 Synonyms
 Different terminology has been used over time
 Often times people avoid using specific language
to cast a wider net with their patents
 Cumbersome results, often off topic
 Full text access back to 1976 – PDF scans back to
1790.
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HTTP://WWW.USPTO.GOV/WEB/PATENTS/CLA
SSIFICATION/SELECTNUMWITHTITLE.HTM
Similar to library
classification, or
shopping in a grocery
store, or classifying
species of
animals/plants
 Starts general,
becomes more specific
as numbers get longer
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WHY DO WE HAVE TO SEARCH SO MUCH?
Cell phones
 Apple patents a
certain size
 Size patent is
approved for
smartphones only
 Apple has the largest
market cap
 App designers
program to a certain
size ratio
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App designers do not
see value in
redesigning for a
different size for a
smaller market
 Fewer apps are made
for other phones
 Potential clients see
added value in an
Apple product; not
only will they buy,
they will pay more.
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MAKE A LIST OF EVERYTHING WE
WANT TO SEARCH
TODAY WE’LL DEMONSTRATE:
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Official Government Website Searching:
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Google Patent Search:
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http://www.uspto.gov
http://www.google.com/advanced_patent_search
LexisNexis Patent/Trademark Search:
http://libraries.luc.edu/databases/database/827
 Search By Content Type
 Patent Search
 OR Individual company profiles
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Law Library Guide: http://lawlibguides.luc.edu/IP
 Chicago Public Library: PubWest
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