Think NanoPreneurship™ interviews Paulina Borrego, science & engineering reference librarian; patent & trademark librarian, Science & Engineering Library

Q. What is the first thing that you would like campus nanoscientists, engineers, and would-be nanopreneurs to know about working with you at the Patent & Trademark Resource Center (PTRC)?
A. The first thing they (and all UMass engineers and scientists) should know is how convenient it is to work with us. The PTRC is housed in the Science & Engineering Library in the Lederle Graduate Research Center and appointments for individual meetings are strongly encouraged (make an appointment through the YouCanBookMe link on the research guide). It’s also important to know that the PTRC is part of a nationwide network established by the U.S. Patent & Trademark Office (USPTO) and has significant special resources including databases and me, a PTRC librarian with in-depth training. UMass Amherst is one of two PTRCs in Massachusetts, with the other located at the Boston Public Library.

 

 

Q. How do your library and PTRC databases compare with Google Patents and the USPTO’s website?
A. Google Patents, the USPTO website, and the UMass Libraries resources complement each other. Simple Google searches uses keywords to find patents, which can be great to get an initial idea of the patent landscape but are dependent on how well the searcher’s keywords match those in relevant patents. There is a risk of missing significant information if an important keyword is overlooked. When keywords are on target, Google Patents yields relevant patents and a way to begin to identify classes and sub-classes for more thorough searching. Advanced searches on Google can be built upon the same search approaches that I teach at the PTRC, limiting to type of patent, patent office, filing status and classification to name a few. The USPTO’s website search interfaces can be daunting but are powerful once the user knows how to use them. One of the purposes of the UMass Amherst PTRC is to provide training that enables more effective use of the USPTO’s web-based databases and search tools. In addition the library has other databases and specialized tools available. It is especially noteworthy that the PTRC can help you access PubEAST and PubWEST, which are used by the patent examiners and are only available to the public through the PTRCs.

Timeliness is consideration, especially in fast-developing fields such as nanotechnology. The USPTO’s US patents data is updated weekly and is typically more current than Google Patents, which does not provide a regular update schedule.

Beyond the databases, there are advantages to working the campus’ PTRC Librarian. PTRC librarians receive specialized USPTO training. I meet regularly with individuals to explain the various search systems available, conduct sample searches, and overall help to put an invention or business venture in the broader context. To that end, I help the people I meet learn what search tools are available (both US and worldwide) and about the respective advantages and disadvantages of each. I teach skills to effectively select and search the right database(s) for the immediate needs. I can suggest ways to document search results to gradually build an understanding of the relevant patent landscape and support future searches. Finally, I can explain the application process, timeline, and USPTO services available.

Map of PTRC locations nationwide, courtesy of UMass Libraries PTRC and https://www.uspto.gov/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrc/ptrc-locations

Q. What are some of the questions that might come up in an initial individual meeting, both in general and specifically for a scientist or engineer thinking about a nano-based invention and related commercialization opportunities?
A. Regardless of the field, in a first meeting we talk about initiating a patent search. For example, if you came to see me, questions that I would ask might include:

• How authoritative do you want the search to be?
• How exhaustive do you need the search to be – do you need to find everything, or just a sample of what’s patented?
• How up to date do you need the information to be?
• Is the invention itself based on recent, innovative technology? Or does it require searching patents prior to 1975?
• Do you know about the U.S. patent classification and the recent change from USPC to CPC (United States Patent Classification to Cooperative Patent Classification)?

Nanopreneurs are typically working with recent technology, which often spares them the need to go back before 1975 and saves some work. On the other hand, it is more likely that they will benefit from the most up to date information possible, which adds to the search challenge.

Q. When do you recommend a would-be nanopreneur or nano-inventor come to meet with you?
A. The knowledge to be gained from reading patents can be very useful much earlier than is generally recognized. So I am delighted to meet even before a researcher has an invention in mind. A very early patent search may reveal prior art to inform the design of a proposed research program. Later on, the same information can be updated and put to work to develop a patent application and understand the patent landscape. Other uses for the information include identifying potential partners or licensees, analyzing competitors, preparing for meetings with potential customers, and making the most of your time with a patent attorney.

Q. Any final thoughts?
A. I will end by inviting nanopreneurs – whether from UMass Amherst of elsewhere in Massachusetts – to check out the online overview of the UMass PTRC and related resources, and to book an appointment with me when ready.