Online Platforms to Assist in Conducting Your Patent Search

by Christie Bell, President Christie Bell, Inc., Certified Licensing Professional, and MTIP SBIR Consultant

You discovered a unique solution to a problem. It might even be the next big thing! While it’s tempting to jump head first into realizing your idea, take a step back before making a potentially costly mistake. If you plan to make, use, or sell your invention, according to Title 35 U.S. Code § 271, you could be liable for infringement if there is “prior art” or evidence that the idea is already in existence. Research into prior art isn’t straight forward, but you can get a preliminary idea before deciding to hire a patent attorney to conduct a professional patent search. 

A thorough patent investigation starts with a search by you, the inventor. It’s not enough that Walmart doesn’t sell a version of your solution, or that a Google search revealed no similar products.  In his Patent Search 101 Tutorial, Gene Quinn, founder of IP Watch Dog®, clarifies two critical reasons to search for patents that correlate with your idea., You will: 1) familiarize yourself with prior art; and 2) become informed on prior art so you can focus on what makes your invention unique. 

Start your search at the United States Patent and Trademark Office (USPTO). The USPTO is the U.S. Department of Commerce agency that issues patents to inventors, and trademark registrations for product and intellectual property identification. Begin your USPTO patent search process by reviewing the office’s help section or viewing a comprehensive video presentation on how to conduct a patent search.

In addition to USPTO, try Free Patents Online (FPO) which was developed to make patent research faster, easier, and more accessible. The FPO database is funded by advertisers so expect to tolerate sideline product pitches. Paid subscriptions are available for advanced services such as AcclaimIP, FPO’s patent landscape and analysis tool. You can customize search criteria for US Patents, US Patent Applications, European Patents (EP), as well as abstracts of Japanese, World Intellectual Property Organization (WIPO), and German patents. FPO’s search engine is driven by keywords and patent hits are provided in the form of an easy-to-read table with clickable links to patent summaries including the patent and application number, abstract, inventors, filing and publication date, assignee, patent images and more.

Google Patents, another free resource, allows for the search of patents from around the world, plus technical papers and books. Results include images, downloadable PDFs and citations. The Google Patents database includes full-text documents for the United States, 21 additional countries and WIPO. The search input options include entering a patent publication or application number, freeform text, and inventor or assignee names. Rare among free patent search services, Google Patents allows for the entry of large text blocks to run their Prior Art Finder keyword extractor which will render suggested search terms. 

After you’ve completed a comprehensive online search, it’s tempting to stop there and move directly into the patent application process. Not yet. No matter how online savvy you are, you need to protect yourself from potential costly mistakes by hiring an IP attorney to perform a professional patent search.  Your intellectual property (IP) may well comprise the backbone of your business. It’s vitally important that you take the necessary precautions to ensure your IP is protected from others making, using or selling your creations. Conducting a preliminary search on your own is an essential first step and will provide a solid basis for any IP attorney you might hire. Contact the Montana Bar Association for information on IP lawyer referrals to ensure the help of a legitimate and knowledgeable professional. This approach will not only protect you from infringing on other inventors but also provide the needed information to tease out why your invention is truly unique. Knowing exactly what sets your idea apart from related inventions and expertly illuminating its distinctive qualities will increase your chances of filing a successful patent application.

Download MTIP’s Innovator’s Guide to learn more about how you can protect your inventions.

Technical and Business Assistance

What is TABA?

by Jim Greenwood, Greenwood Consulting Group, MTIP consultant and guest columnist

The goal of an SBIR or STTR project is to commercialize the results of the R&D so that agency or private sector customers benefit. To assist in this transition effort, some SBIR/STTR agencies provide small amounts of funding to hire someone to conduct market research or otherwise help with the commercialization activities for the project. Formerly known as Direct Technical Assistance or Discretionary Technical Assistance (DTA), the new term for this is Technical and Business Assistance (TABA)*.

Most agencies providing TABA have contracted with a private firm to work with their SBIR/STTR recipients on commercialization planning. However, agencies now have the ability to provide you (but are not required to do so), the SBIR/STTR Phase I awardee, no more than $6,500 supplemental funds so you can hire your own commercialization assistance providers. To request TABA supplemental funds, you will need to include the TABA request in your SBIR/STTR cost proposal as an amount above and beyond the agency’s normal funding limit. For example, if the agency typically caps Phase I awards at $150,000, you will submit a proposal for not more than $156,500. You also will need to explain, in the budget justification, who you will be hiring and what their qualifications are to assist with your commercialization efforts.

There are several important considerations here: 

  1. You must include a request for TABA funds at the time you submit your proposal.
  2. You must specify a third-party provider of the TABA—you cannot get TABA if you plan to do all the commercialization efforts with internal company resources/personnel.
  3. You cannot tack onto a $5,000 request your indirect rate or fee/profit—it is $5,000 and $5,000 only.
  4. If you decide to select a commercialization assistance provider other than the firm contracted by the agency, the agency can decide whether or not it believes your plan for the TABA, and the qualifications of the third-party provider, are adequate and appropriate. In other words, just asking for TABA to fund your own commercialization assistance provider isn’t a guarantee the agency will approve it. 
  5. Research the types of services that the agency’s contracted firm can provide – $6,500 isn’t likely enough to fund a third-party to do very much commercialization assistance for you. This latter point, by the way, is often overlooked. The firm hired by an SBIR/STTR agency to provide TABA to its many SBIR/STTR winners will benefit from economies of scale that it can pass onto its many small business clients (e.g., volume discounts on market databases and reports). You may require very specific assistance that warrants selecting your own commercialization assistance providers.
  6. TABA supplemental funds for Phase II awardees range between $5,000 and $50,000 depending on the agency.
  7. Not all agencies provide TABA. Some only provide TABA for Phase II awardees.

To determine if an SBIR/STTR agency provides TABA, review their latest solicitation. Because TABA has been known under various names, be prepared to look for text that describes the supplemental funding/assistance described in this article regardless of what name might be tacked onto it. If you don’t find text describing such assistance, then you can always contact the agency’s SBIR/STTR office to determine if they provide TABA or not.  

*The full text of the of section 9(q) of the Small Business Act that describes the Discretionary Technical and Business Assistance, can be found here:
15 U.S.C. 638(q)

News! MSU TechLink Receives Federal Grant to Help Montana High-tech Companies

MSU TechLink receives federal grant to help high-tech companies
Troy Carter, TechLink Staff Writer via the MSU News Service
SEPTEMBER 10, 2018
BOZEMAN – Montana State University’s TechLink Center has been awarded a federal grant to expand its assistance to technology-related businesses across Montana.

The U.S. Small Business Administration announced on Aug. 29 that it had awarded a Federal and State Technology (FAST) Partnership Program grant for $125,000 to fund the Montana Innovation Partnership (MTIP) program managed by TechLink.

Montana is one of just 24 states to receive a FAST grant for the upcoming federal fiscal year. Grants are awarded through a competitive application process. Montana has received this grant in six of the past eight years.

“This program helps entrepreneurs and small tech companies compete for vital early-stage seed capital for innovative technologies with commercial potential,” said Will Swearingen, executive director of TechLink. “Simply put, this grant will help us grow Montana’s technology sector.”

The MTIP program was established in 1999 by the Montana Department of Commerce to support technology-based economic development. The department transitioned MTIP to TechLink in August, though TechLink has collaborated with MTIP since its creation.

MTIP helps qualified businesses and entrepreneurs secure funding for research and development through the federal Small Business Innovation Research (SBIR) or Small Business Technology Transfer programs.

TechLink will use the FAST grant to increase MTIP’s outreach, training, mentoring and technical assistance throughout the state, with particular emphasis on women-owned, rural-based and businesses owned by socially or economically disadvantaged people. Some of the funding will be used to help Montana businesses pay costs associated with SBIR applications.

The MSU TechLink Center is integrated with MSU’s land-grant mission and economic development outreach. In addition to its SBIR outreach program, TechLink is the Department of Defense’s national partnership intermediary for technology transfer. The center also manages MSU’s Technology Transfer Office and a software engineering and analysis laboratory. As well, it oversees the Procurement Technical Assistance Center, which helps small businesses in Montana compete for federal government contracts.

To learn more about the Montana Innovation Partnership or to request services, please visit: montana.edu/techlink/sbir.html or email MTIP program manager Ann Peterson at ann.peterson@montana.edu.

Press contact: Troy Carter at 406-994-7798 or troy.carter@montana.edu.