How can I do my own (FREE) patent search?

Posted on February 18, 2010 by Richard Gearhart

Inventors often ask how they can find patents related to their idea. Patent searching is not especially difficult, although it can be time consuming. 

The goal of patent searching is to understand the prior art related to the invention. This serves several purposes. First, it can help an inventor decide if patent protection is worth pursuing. Second, it can help the patent drafter draft broad claims that avoid the prior art.

Prior art constitutes everything that ever happened prior to the date of invention by the inventor, anywhere in the world. It includes not only patents and patent applications, but other publications and products too.

 

A through patent search includes a review of patents and patent publications outside the US, as well as patents and patent publications outside the US.

The internet provides excellent access for prior art searching. For example, as simple keyword search in Google or Yahoo can locate similar products.

The internet is also an excellent venue for patent searching. There are a number of patent data bases that provide excellent results.

 

For example, theUnited States Patent and Trademark Office has an excellent data base for searches of US Patents and Publications.   For Patents outside the US, good places to look include the World Intellectual Property Organization, website (Patent Scope), the European Patent Office search site Espacenet . 

 

Other free online services include Google Patents, and Free Patents on Line, among others. It is not always clear, however, how secure the free online patent searching data bases are.

 

The most common approach to searching is to simply type in keywords that reflect the invention, and review the resulting results. Sometimes, however, the search returns too many results. The search can be narrowed by using classifications. 

 

Classifications are the categories that the Patent Offices use to sort and organize patents into groups. Adding a classification to your search can limit your search results and omit extraneous patents that have no relation to your invention.   A full explanation of classification searching is beyond the scope of this post, but for the truly dedicated an excellent explanation can be found at the US Patent Office Search Site Classification Help.

 

These data bases can provide the inventor excellent tools to do their own patent searching. Final decisions about whether to file a patent should always be made in consultation with a patent attorney.

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Licensing - The grant clause.

Posted on February 8, 2010 by Richard Gearhart

One of the most important clauses in a license agreement is the “grant clause”. The grant clause defines the scope of the legal rights that the patent holder (or “Licensor”) gives to the user (“Licensee”). The scope of the grant clause has significant implications for the commercial use of the invention.

Here is a typical grant clause that could be found in a license agreement – there are many ways to grant rights in a patent, the one below will suffice for illustrative purposes:

 

“The Licensor hereby grants the Licensee an exclusive, royalty bearing license in US Patent 9,999,999  in the territory defined as the United States.”

 

The grant clause is full of important information.

 

First, the grant clause states the license is exclusive. This means that nobody except the Licensee will have the right to make, use or sell the technology.   The parties have agreed that only this one user will have the right to commercialize this invention. This is in contrast to a “non-exclusive” license. A non-exclusive license gives the patent holder the right to grant additional licenses to other users. In some cases, the license can be drafted in a way to start as an exclusive license, then change to a non-exclusive license. This can be conditioned to happen if the user does not meet certain conditions of the license, such as minimum sales requirements. Sometimes, the patent holder agrees to give a time advantage to the first user, then after a year open the market to other users.

 

Second, the grant clause above states that the license is royalty bearing. This means that the user will pay the licensor a fee for the right to use the technology. Usually, the royalty is paid on a per unit sold basis, although other methods of calculation are possible. The royalty can be paid on a net profit or a gross profit basis. Royalty rates, or the percentage paid per unit, can very greatly depending on the product and industry. The percentage is usually an important focal point of the negotiations.

 

The grant clause also refers to a specific patent, here fictionally referred to as US Patent No. 9.999.999. It could also refer to several patents, a patent portfolio, or even to just one or more claims to a patent. So a license can grant rights in multiple patents as well as

a single patent.

 

The last part of the clause states the geographical region in which the license is granted. In this case, the grant is in the United States. This can be altered to be a region or territory, or expanded to be global, or a region.

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Patent Assignments

Posted on February 3, 2010 by Richard Gearhart

               Patents are property so, like any property, ownership can be transferred from one person or company to another. A patent attorney can help prepare an assignment for the inventor. 

               A “patent assignment” is the legal document that makes this transfer happen.

A common type of assignment is the transfer of ownership of the patent or patent application from the inventor to the inventor’s LLC.

 In the United States, patents are filed in the name of the inventor. If the inventor has patented the invention, the inventor can keep ownership of the patent in his or her name, or they can make it an asset of an LLC. If the patent or patent application is to be owned by the LLC, an assignment is executed by the inventor and the transfer becomes effective.

If there are multiple inventors on a patent application, then both inventors may assign the patent to the LLC. The LLC document (or operating agreement) can spell out how the profits from the venture are to be allocated.

            Inventors often sell their patent as a way to profit from it. An assignment will also be executed if the patent is sold to a third party.

            Inventors who invent for their employer may have an employment contract that requires them to assign the patent to the employer. An assignment will be executed in this case. Again, a patent lawyer will help prepare the needed documentation.

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