Tips for fulfilling patent

application

1 © 2012 Grace@iii.org.tw & cise.ntut

Chen JingFung (Grace) @csie.ntut.edu.tw

2012/06/07 Chapter 8, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825

Draft the spec.

Initial draws

Outline

• How to separate the related inventions or combine those in one

– case study: radio met car

• Filing application tips - "KISS rule“

– Trademark note

– Software & biz methods notes including source code & flowchart

– First sketches skills (Official Gazette, OG)

– Drafting the specification hints

2 © 2012 Grace@iii.org.tw & cise.ntut

– 82-year

evolution – In-car

connectivity & infotainment systems on vehicle today

3

© 2012 Grace@iii.org.tw & cise.ntut

1930 Radio + automobile (1st time)

1952 FM

1964 Cassette

1985 CD player

2001 Satellite

2007 “Sync” user’s Smartphone

2012 app integrates smartphone, store media & more content with radio

ref: CBS 2012

Car

met

Radio

Pandora Media –

Internet radio service

4 © 2012 Grace@iii.org.tw & cise.ntut

2012 Stand-alone players

Apple Android phones BlackBerry platform

WebOS

Palm

Mobile phone

Win mobile

Car dashboard

Ref: pandora media

Apply more related inventions

Filing application

Grant of patent

postpone

Expire 20 years

5 © 2012 Grace@iii.org.tw & cise.ntut

Ref: wall street journal 2012

Examiner

Y

Fees + effort

Show describe & claim in same application

Restrict your application to one

File a divisional application

…

Your invention

N

This divisional application can delay 2nd filing fee by 1~2 yr

“KISS” rule (Keep It Simple, Stupid!)

• Misconception

– Should not include details of the invention since this will limit the invention (?)

• Fact

– The scope of the invention is determined mainly by the claims => as detail in the specification as you can

– “you must get it right the first time”

• Put insufficient info <- your application can be rejected under Section 112 on the grounds of “incomplete disclosure”

• Otherwise, you should have a convincing skill

© 2012 Grace@iii.org.tw & cise.ntut 6

Trademark Note - Chemical

• If your invention uses a trademarked chemical

– such as “Ajax developer” <- you don’t know its composition

– general speaking, AJAX = Asynchronous JavaScript & XML is used to exchange data with a server & update parts of a web page without reloading

• Find other similar chemicals will work

• Refer to the chemical by its generic name with a reference to a suitable manufacturer – Drawback: this can limit your invention

• Ex. Ajax Chemical Company

• Another example, a inventor found the composition => a Poison Control Center hotline

© 2012 Grace@iii.org.tw & cise.ntut

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Trademark note - process

Work mark MUSIC GENOME PROJECT SPOTIFY PLAY EVERYWHERE

Goods & Service

• Streaming of music of others over a global computer network

• Providing music reviews and information in the field of music over a global computer network

• Profiling musical tastes based on consumer selection of music clips played over a global computer network, and recommending other music to consumers based on such selections

• … for use in the delivery, distribution and transmission of digital music … multimedia content; …for enabling transmission, storage, sharing, collection, editing, organizing and modifying audio, … other data for use in social networking, online chats and interactive gaming, … ; …for creating searchable databases … for peer-to-peer social networking databases; pre-recorded CDs featuring music; …streaming or downloading music, film, TV-programs, audio books and games

• Advertising and marketing services • Electronic transmission and streaming of digital media

content for others via global and local computer networks • Entertainment, namely, providing streamed or

downloadable music, film, tv-programs, audio books and games to users online via a communication network

Serial No. 75980916 85603484

Filing date January 14, 2000 April 20, 2012

Owner (REGISTRANT) Kraft, Jon INDIVIDUAL (LAST LISTED OWNER) PANDORA MEDIA, INC.

(APPLICANT) Spotify AB CORPORATION SWEDEN

© 2012 Grace@iii.org.tw & cise.ntut 8 Ref: Spotify Apps API

Software, Computer-Related Inventions,

and Business Methods

• The main consideration applicable to any inventions is in meeting the full disclosure requirement – Contain a sufficiently detailed description of the

invention

– make absolutely sure it contains a • “full, clear, concise, and exact” description of the

invention and

• how to make and use it

• The explanation should detail – how to configure the computer to perform the required

function and interrelate

– with any other elements to yield the claimed inventions

© 2012 Grace@iii.org.tw & cise.ntut 9

Software note for filing application

• If your invention includes a microprocessor and an application program for it,

– either in software or in firmware

• Should include a source or object code (or pseudo code) listing with your application – use your chart to write the program & debug it without undue

effort or significant creativity

» even if the task would take several months

• or detailed flowchart of the operations & steps © 2012 Grace@iii.org.tw & cise.ntut 10

<- a pseudo code for General Search Algorithm

Software note - key for fulfilling (1

be hardware based after Bilski v. Kappos

• A general-purpose computer software

– The process may run in a PROM (programmed read-only memory) or a separate program on a disk

– Should explain in the specification

• how to implement the listing &

• any special instructions <- necessary without undue experimentation

• Should detail how to configure the computer <- Goal: to yield the claimed invention – perform the required function &

– interrelate with any other elements

© 2012 Grace@iii.org.tw & cise.ntut

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Software note - key for fulfilling (2

link with hardware

– What programming language the listing is in

• Ex. “C++” how to use it to control the computer/microprocessor

– What type of computer/ microprocessor to use it with (e.g. “a Pentium chip”)

– What hardware should be connected to the computer, both on the input & output sides as necessary

• Ex. MIDI interface & a projector touch UI

© 2012 Grace@iii.org.tw & cise.ntut 12

Ref: flstudio-tutorials.com

US 2010/0188428 A1 Mobile terminal with image projection

Software note - key for fulfilling (3

who test your code?

• Provide the necessary disclosure is to supply the listing as part of the patent application – Be submitted in ASCII format per PTO Rule 52(e) (37

CFR 1.52(e))

• The program should be free of – any serious bugs & not have many minor bugs

– Let no one argue your listing wouldn’t function according to its specifications • (PTO won’t test your program but your adversary will!!)

© 2012 Grace@iii.org.tw & cise.ntut

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Program size (72 characters/line) Send to PTO

More than 60 lines The end of specification

300 lines or less On drawing sheets/ in the specification

More than 300 lines CD-ROM [PTO Rule 52(e)], EFS-web (PDF is available)

File program listings & biotech sequence lists

Software note - key for fulfilling (4

only flowcharts

• Make sure flowchart’s complete & detailed enough <- A flowchart like the plans for a building – Let a programmer can write a program by using your

routine skills

– Even if it will take a builder several months (or months, years or more)

– If the plans are rough, should hire an architect to complete them (use a lot of imagination) • Then they’re inadequate

• Explanation - flowchart – Discuss each block detail, list the equations referred to,

explain exactly how to implement the flowchart

© 2012 Grace@iii.org.tw & cise.ntut 14

Example: adequately detailed flowcharts

© 2012 Grace@iii.org.tw & cise.ntut

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General

Specific

US5170279 .. calibrating and improving linearity of system for … <- application type: Utility

Software note - key for fulfilling (5

SC + flowchart

• a copyright notice (© , (cc) or copyleft ) in the patent application – Reader can copy your application & using your program

– Copyleft licenses (for software) for reproducing & modifying the work • source code files will contain a copy of the license terms &

acknowledge the author(s)

• If you afraid pirates to copy your source code (SC) – so it’s best not to include source code, if at all possible.

– provide just the object code (machine code) or a detailed flowchart.

© 2012 Grace@iii.org.tw & cise.ntut

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Object code is a sequence of statements or instructions in a computer language,

Ref: wiki

• usually a machine code language (i.e., 1's and 0's) or • an intermediate language such as RTL

First Sketches & Name Parts (1

• Only consider a set of sketches showing all of the aspects of your invention – without worrying about size or arrangement

– Later on we can be reduced and compiled them

• After completed your sketches, write down a name for each part adjacent to such part in each sketch, – such as “handlebar,” “handgrip,” “clamp,” “bolt,” etc.

– If difficultly naming any part, should refer to • The Glossary of useful terms (Patent It Yourself, 2011 - Appendix 3)

• Your prior-art patents or

• A visual dictionary such as – The Firefly Visual Dictionary by Corbeil and Archambault (Firefly Books,

2002) or the Visual Dictionary of Science (DK Publishing, 1998).

© 2012 Grace@iii.org.tw & cise.ntut

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First Sketches & Name Parts (2

Isometric View with hidden lines

• Drawing should be done in separate, unconnected figures, each one labeled – Ex. “Fig. 1,” “Fig. 2,” … – possible different views and

embodiments of your invention

• If 2 figures are related, make them with the same prefix name – Ex. “Fig. 1A,” “Fig. 1B,” etc., or “Fig.

1,” “Fig. 1’,” etc. – Use as many views as necessary – Get an idea (from prior art) as to

how to it’s done

18

US3751963 Contact crimping tool

© 2012 Grace@iii.org.tw & cise.ntut

First Sketches & Name Parts (3

• Use reasonable symbols for mechanical, electronic/electrical, & chemical parts – Suggest use conventional symbols such as ANSI – An electronic system, a block diagram with each block

labeled • “Schmitt Trigger”, “flip-flop”, “inverter”… • If block represents a non-conventional circuit

– Explain clearly what’s in the block/ provide a reference to a suitable publication

• If any block represents a programmed microprocessor – Provide a listing of program / software flowchart

• Select one figure of your drawing (comprehensive enough) to be included in the Official Gazette (OG) – After grant patent, PTO will publish it

• If your invention is related to prior-art – illustrate the prior-art device in the first figure <- you explain it & its

drawback

© 2012 Grace@iii.org.tw & cise.ntut 19

First Sketches & Name Parts (4

• Machine Sketches

– Contain enough views to show every feature of the invention

• Chemical composition sketches

– Has a non-homogeneous composition (internally differentiated through layering)

– Should show it in cross-section detail

– If involve a step-by-step process <- PTO will require flowchart • Let examiners, judges,

searchers understand your patent more rapidly

© 2012 Grace@iii.org.tw & cise.ntut 20

Tips for Drafting the Specification (1

• After reduced those sketches, try to draft the specification with separate sections, each with a heading

• Drafting Tips – Avoid Legalese (“patent Profanity”) <- a layperson

don’t know “the correct legal terms to use.” • Will make your writing stilted, less clear, and harder to

understand

• only legal requirements for “The claims” should be written with extreme clarity and precision, and – have to use a few “saids” and “wherebys”

• Legal terminology was created by lawyers to make their writing less understandable

© 2012 Grace@iii.org.tw & cise.ntut 21

Key: clarify your subject

Tips for Drafting the Specification (2

• Use short & simple sentences – Description in short, simple sentences with short

paragraphs • Each paragraph < 200~250 words/ one page (double-

spaced

• Should relate to one part or subpart of your invention

• A sentence may < 13 words – ref: Cybernetics Institute found 50% audits ability

• Don’t worry the beauty of language – Goal: include all points of substance of your invention & make

your description clear

• Avoid grammar & spelling error

© 2012 Grace@iii.org.tw & cise.ntut 22

Summary

• Start form the trends of radio + car – Introduce Pandora Media lnc. – Internet radio service

to tell how to PTO’s response on applying a big patent (among more than one domain)

• Then, share some tips on fulfilling a application including – Trademark note, software & biz methods notes

(SW+HW, source code & flowchart), first sketches skills (Official Gazette), drafting the specification hints

© 2012 Grace@iii.org.tw & cise.ntut 23

Final oral report

• Total: 12-15 pages

– Each item may include more than one page

– Format

• Title

• Outline: oral flow

• Prior-art (related reports, patents, papers…)

• Description & operations (flowchart + explains)

• Comparison table: show advantages

• Members’ contribution table

• Summary

© 2012 Grace@iii.org.tw & cise.ntut 24

Reference

© 2012 Grace@iii.org.tw & cise.ntut 25

• David Pressman, chapter 8, “Patent It Yourself: Your Step-by-Step Guide” to Filing at the U.S. Patent Office, 2011, 15th edition, ISBN-10: 1413313825

– Reference by “Previous Course Slide” record set:

• Introduce invention -> evaluate invention -> WM2Patent,

• Patent Requirement (novelty & nonobviousness),

• Patent search (classification search, foreign protection to gain your skill, Inquiry for patent search, polishing search skills)

• Defend your Rights

• Blog: http://fungsiong.blogspot.com/ – Introduce hybrid TV/Smart TV (hbbTV) including

• widget, Android(API), system, ecosystem, framework, service, application…

– Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile • About how to teamwork

– Some programming info such as • Apache wookie, refactoring tech, CE-HTML, a solution about removing a

backdoor “Trojan” & surveillance paper

APPENDIX

© 2012 Grace@iii.org.tw & cise.ntut 26

USPTO -

Transaction

History

• App no. 12/357,752 US 2010/0188428 A1, Mobile terminal with image projection – Assignee: LG

– Application type: Utility

– Status: Non Final Action Mailed • Date: 05-21-2012

– Filing date: 01-22-2009

– Class/ Subclass: 345/661

© 2012 Grace@iii.org.tw & cise.ntut 27