uw ip management certification program managing patent creation april 24, 2008 james robarts...

UW IP Management Certification Program

Managing Patent Creation

April 24, 2008

James RobartsExcelsior Bonifico Company

[email protected]

Presented to U of WA IP Cert courseApril 24, 2008

Copyrights © Excelsior Bonifico Company 2 of 26

Tonight’s Goals

Provide yet another patent development overviewLegal – patent requirements, USPTO use

Business – collecting patent candidates & clarifying use

Innovations – classifications, specification, and uses

Review need and techniques for prior art searches Consider Apple’s IPod patent effort Compare competing patent claim scopes Offer take-home prior art search puzzle



An Almost Really Simplified Patent Process

1. Have a valuable innovation• Identify a problem of economic value• Specify a novel solution to problem

2. Document & witness the solution3. Characterize/analyze how solution relates to

• Technical field – prior art• Industry – application of solution Initial Invention Disclosure

4. Prioritize solutions within a budget Product Definition Layers

5. Prepare patent disclosure and claims 6. File application w/USPTO, Wait until USPTO examination7. Negotiate claims w/USPTO8. Pay periodic fees9. Mark your products



US Legal Bars

Actual inventionPriority (invention vs. filing dates)Prior art

Patentable InnovationNewUsefulUnobvious

Completed DocumentationExample of invention (specification & background)Inventors, Assignees, & AgentsTechnology relationships, such as USPTO classifications & prior art

Fees Due Dates & Expiration USPTO.gov



Throughout the 90’s Apple seeks to extend their brand to portable computing devicesThe Newton first offered in ’93, discontinued in ’99 after failure to

capture significant share of emergent PDA market

Jobs narrows research focus to “information appliance”“…digital pocket Walkman”

2000 Creative Technology ships Zen portable music player 2001 Apple introduces the iPod

iPod Case Study – Introduction



Case Study – Oct 2001

2000 ’01 ’02 ’03 ’04 ’05 ‘06

Zen ShipCreative

Technology

AppleiPod Ship

1 year



Patent Search Engines

USUS Patent & Trademark Office www.USPTO.gov

Thomson Delphion IP Network www.Delphion.com

Internet www.google.com

InternationalEurope http://www.espacenet.com/

Japan http://www.ipdl.ncipi.go.jp/homepg_e.ipdl

World Intellectual Property Organization http://www.wipo.int/ipdl/en/

Lots of others, Internet search “patent searches”



Field Codes



Which USPTO Search Fields to Use?

Most UsefulAbstract (summary) /abst Classifications (type of technology) /cclDates (issue, application) /isd, /apdPeople & Companies /in, /anPatent references /ref

Less UsefulDisclosure (full specification), /specTitle, /ttl



Database Searches: Precision vs. Completeness

Precision – finding no more than you need Completeness – not missing something relevant Searching is a skill. Record your search terms,

share expertise Finding Creative Technology.ppt



Case Study – July-Oct 2002

2000 ’01 ’02 ’03 ’04 ’05 ‘06

Product Ship

Creative Technology

Apple Product Ship

Patent Publish

Non-provisional Filed

Provisional Filed

1 year18 months



Interference & Diligence

Inventor A

Inventor B

Invention Conception

2000 ’01 ’02 ’03 ’04 ’05 ‘06

Application Filed

Application Published

Application Filed

18 months

Invention Conception?

Inventor Diligence



Case Study – July-Oct 2002

2000 ’01 ’02 ’03 ’04 ’05 ‘06

Product Ship

Creative Technology

Apple Product Ship

Patent Publish


Provisional Filed



Patent Parts

Patent as Document• TITLE• Dates• People: Inventors, Assignees, Attorneys, Examiners• References to other patents (opt)• Cited by (opt)• Federally Sponsored R&D statement (opt)• Serial numbers & status codes

Patent as Invention Disclosure• ABSTRACT• BACKGROUND• SUMMARY• DESCRIPTION• FIGURES

Patent as Rights• Published Claims• File Wrapper

Application Example – ApplePatent Example – Creative Technology



Claim Scope

Independents are the broadest Dependents add specificity to Independents,

making them narrow• Consider when making Boolean searches…more AND

terms means more precision & restricted hits



Claim Architecture

Apple Application

Creative Technology Extract



Case Study – Claim Comparison



Case Study – Claim Scope

display 1st order+ select 2nd order+ display 2nd order

select 1st order+ display 2nd order+ select 2nd order+ display 3rd order+ access a track



Case Study – Comparing Wrappers

Apple

Creative Technology



Case Study – Current Status

Microsoft

2000 ’01 ’02 ’03 ’04 ’05 ‘06

Creative Technology

Apple

Patent Granted

Patent RejectedNon-provisional

Filed


Product Ship

Patent Publish


Provisional Filed

Product Ship



Take Home Background – Patents for Match Making?

SEATTLE PI -- Feb 2, 2007 -- Yahoo has been accused in a lawsuit of infringing a U.S. patent on a way to match users' personality profiles. Spark Network Services (not Spark Networks) also named Match.com and eHarmony.com as defendants



Take Home Assignment – Patent for E-mates?

E-mates has a unique way of match making; a process that uses a “feedback profile”, as described in simulation background and next slide.

1. If this innovation had not yet been publicly disclosed, could they pursue a patent?

2. Should they?3. What is the problem? What is the invention and its uses?4. What prior art might be relevant? Share in class three

examples of granted US patents that should be considered as prior art candidates.

5. Share in class one claim that might restrict LoveGenes operations.



E-mates Innovation

“…the most reliable predictor of a successful relationship is to take an average score of the feedback from other subscribers who dated that person and later rated the person in a variety of categories, including physical attributes, personality, ethics, and personal interests. The more feedback provided about a subscriber by the dating party, the more accurate a profile that E-mates maintains. E-mates then matches the profiles of subscribers based on both their “feedback profile” and their personal preferences, giving more weight to the feedback profile unless the subscriber is new to E-mates.”



Check Competitors

Does EHarmony.com have any patents?an/eharmony$ 6,735,568

Method and system for identifying people who are likely to have a successful relationship

Related to our operations? Cited by others?



Referenced by 568



How to search

http://www.uspto.gov/web/offices/ac/ido/ptdl/step7.htm

http://www.lib.utexas.edu/engin/patent-tutorial/index.htm



Recap

Patent development overviewLegal – patent requirements, USPTO use

Business – collecting patent candidates & clarifying use

Innovations – classifications, specification, and uses

Review need and techniques for prior art searches Consider Apple’s IPod patent effort Compare competing patent claim scopes Offer take-home prior art search puzzle

UW IP Management Certification Program

Patent Creation

April 24, 2008

James RobartsExcelsior Bonifico Company

[email protected]



Invention Disclosure Form

Problem – describe an existing business need, or clear technical barrier External – user, not customer Internal

Previous Incomplete Solutions – prior art How have others attempted to satisfy need? How did each of these attempts fail? Include only that which is known at time of invention

New Complete Solution – technical specification & uses• Short friendly name• Brief description of how it solves problem – conceptual sketch desirable

Minimum Necessary• Highlight differences from previous solutions and benefits derived• References/links to details• Additional: project name, names of targeted products, potential product features,

expected effort to implement$ How might solution be used in other ways?

Who/When Co-inventor candidates Disclosure dates Witnesses or notebook references



US Patent PendencyPatent Pendency By Technology Center

Months

Mechanical Engineering, Manufacturing, Products & Design

Transportation, Construction, Agriculture & Electronic Commerce

Semiconductor, Electrical, Optical Systems, & Components

Communications

Computer Architecture, Software, & Information Security

Chemical & Materials Engineering

Biotechnology & Organic Chemistry

6 12 18 24 30 36Patent Filed

Patent Published

Pre-Publication Period

Provisional Rights Available

First Office Action

Copyright © 2003 Excelsior Bonifico Company



Patent Analysis Tools – Product Definition Layers

Benefits – why buy product? Features – what does it do? (customer) Functions – what does it do? (technically) Technologies – how does it do it? Rights – what do patent claims reserve?



Analysis Tools – Tech/Benefit Matrix

uw ip management certification program managing patent creation april 24, 2008 james robarts...

Documents

patent creation

patent candidates

patent processhave

search terms

uspto usebusiness

ipodcase study

pptcase study

application isd