Working Model to

Patentability -> Statutory Class

Chen JingFung (Grace)

@csie.ntut.edu.tw 2012/03/15

Chapter 4 & 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825

Outline

• Secret for intangible idea -> tangible assets

• Working Model to realize substance

– Work invention by yourself

– Implement your idea via others (Ex. Consultants)

• How to avoid “disputes”

• Patentability

– Introduce legal requirements

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keep secret when ask

• Some good alternatives that can protect your invention – Mark before advice

• Top of logbook entry labeled that “… understand xxx’s confidential” + date – xxx: name of invention

• Add a “Comments” column to indicate that you value their opinion

– Ask them to sign + date as witnesses

– Get your consultants to sign the “Nondisclosure Agreement” <- Serious!!

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Lock for nice guy or theft

– Email (inferior to the other devices)

• Ex. Send a confirming or thank-you letter (before/after)

– No matter how to prevent loss of trade secret (your invention), don’t go overboard

• Positive thinking – Most stolen inventions mean they have business value

• “Let them steal it – they don’t know how much work they’re in for” – Said by the highly successful inventor Paul Brown

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vs.

Working Model -

Show your ambition

• Build & test a working model (prototype) for your invention – Engage someone who will do it for you for a fee

($$)

– Working model can show your marketing consultants, plus valuable info about • Operability, cost, technical problems & other factors

(+/-)

• Build a “virtual prototype” (computer simulation)

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Fig ref: digitalarchives.tw

Working Model (WM) –

training environment (Arduino)

• Arduino (hackspace@wiki; XinCheJian@china) is an open-source electronics prototyping platform based on easy-to-use hardware & software – Receiving input from a variety of sensors

• Controlling lights, motors & other actuator

– Microcontroller on the board is programmed using • programming language

– based on Wiring

• Development environment – Based in Processing

– Can be stand-alone/ communicating with software running • E.g. flash, processing, MaxMSP

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Fig ref: http://www.arduino.cc/ video: history of Arduino 2010

• Hire 1 ~ more model makers for a fee/ for a percentage of the action

– Can’t build & test it (WM) yourself

– Use Model makers as engineers, technicians, & teachers

– Where can find makers?

• There may be a workshop (seminar) in your area – Will supply you with tools, space & assistance for a fee

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Use a Model Maker

Workshop – Exhibition place

• San Francisco area hosts “Techshop” – A 15,000 foot2 membership-

based zone – Provide members with access

to tools, equipment, instruction, & support community

– Support people build the things which they wants

– Open in 5 location in US (+ in planning: 3): • Opening: Menlo Park, Raleigh,

San Francisco, San Jose, Detroit • In planning: Portland, Brooklyn,

Los Angeles

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Fig ref: botjunkie.com

http://techshop.ws/

Agree

ment

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• Recital: – certain skills

to develop project completely

• Mediation & Arbitration – Shall

negotiate in good faith …

Ref: Form4 – 3, Patent It Yourself , 2011, P.503-504

Detail description for Done:

wire-frame model

• Wire frame model – A visual presentation of 3D/physical object

• Composing by vertices + straight lines or curves

– Programming tools • DNC machine tools, CAM, 3D CAD (surface &

solid), CNC

– Application • Animation, CGI, 3D CG, Polygon mesh, vector

graphics…

• Mockup (design new product) – Automotive devices, systems engineering, military

acquisition (F-35 lightning II), consumer goods, furniture & cabinetry, software engineering…

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Fig ref: fredbizar.blogspot.com

Fig ref: wiki

Detail description for Done:

plastic-covered

• Plastic-covered can make many types things

– Advantage:

• useful in the building and construction, electronics, packaging (gladwrap), transportation industries

• Plastic is good, light, strong and cheap to produce

– Drawback

• is indestructible

Grace@cise.ntut 11 Fig ref: iii

Fig ref: III-SNSI R&D 100: In-Snergy

Fig ref: besthousedesign.com Ref: answers.com

Trade rule

• Manner of payment – Usually 1/3 at start, 1/3 upon construction & 1/3 on

acceptance by you – Or pick the state where you reside if the consultant is out-

of-state

• Break the law @ USA – The Agreement requires the Consult to perform in a timely

manner – Void the Agreement & pay only 50% – Have the Consultant pay an agreed-upon penalty for every

day – Agreement contains a self-explanatory provision

• Regarding the Consultant’s prior invention

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Handle people problem

with Outsourcing

• Naturally brings up the issue during hiring consultants to build, test or develop – Consultants often come up with patentable improvement,

ramifications …

– Consultant’s work should follow under the Agreement

– Involve disputes as possible in Agreement • Who will own (?) & be able to use the consultant’s invention (?)

– Prevent many misunderstandings, argument, and event lawsuits later on

• The consultant won’t be able to claim that a valuable invention – Because it was made on the Consultant’s time

• Apply patents in joint names – If the invention is closely related to / improves on yours

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Patentability (?)

• 4 legal requirements for getting a utility patent – Statutory Class by patent law

– Utility as a useful one

– Novelty • A new physical feature (?)

• A new combination of separate old feature (?)

• A new use of an old feature (?)

– Unobvious • Can provide one or more new and

unexpected results (?)

• A skill can make of innovation in the specific technology – How to measure “design patent”

by a feeling (ornamental or aesthetic sense) (?)

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a statutory class ? (35 USC 101) Process (method), machine, manufacture, composition,

new use?

Useful? (35 USC 101)

Novelty? (35 USC 102)

Unobvious? (35USC 103)

PTO judge’s criteria for 4 legal

requirements

• The last one “Unobvious” is relatively high

– First 3 tests (Statutory class, Utility + Novelty) is short steps

– PTO review procedure

• Fit within at least one statutory class (?), Have utility (?), Posses novelty (?)

• Unobvious (?) <- reject by

– Most of patent application fail to this (almost ½ patent applications)

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Unobvious

Novelty

Utility

Statutory class

Requirement #1:

the statutory classes

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Patent Laws - PTO publishes its Manual of Patent Examining Procedure (MPEP)

• PTO must consider your invention “within a statutory class or category” – 5 classes: process (method), machine, manufacture,

composition, new use

– Most invention can squeeze into at least one of them • Overlap to some extent

• You don’t have to specify the one to apply

– carefully “nonstatutory subject matter” • PTO may reject it under MPEP Section 101

• you should be sure it does not fall into one of the exceptions below…

Fig ref: Patent It Yourself, 2011

Statutory Class [SC] (1) –

Processes including Software

• Nonstatutory (in past) -> statutory case

– Show a useful result can earn a patent

• US4597578(1986) title: Golf club grip

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useful result

No. 1 Tseng wins LPGA Thailand 2012

Statutory Class [SC] (2) –

Conventional Process

• Conventional process are heat treatments, chemical reactions or chemicals – Show better performance than before

• PTO has been granted a patent (US7470439, 2008) about feeding chickens a special diet that results in better eggs, and analyzing those performance.

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Live weight

Egg production

Statutory Class [SC] (3) –

exception for conventional process

• A patent lawsuit talk on treatment procedure – Describe a process of attaching a hairpiece to

a bald person’s scalp by putting suture anchors in the scalp and sewing the piece to the suture anchors

– Surgical operations can be patented

• However, the law exempts medical practitioners from infringing any patent on a medical procedure

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Statutory Class [SC] (4) –

introduce software process

• Most software-related invention are claimed as process – Also software inventions can also be claimed as

machines

• Algorithms cannot be patented without involving hardware <- “abstract idea” – An algorithm is a step-by-step problem-solving

procedure

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case result

Software/algorithm affects some Hardware/process

Falls within a SC as a machine/process

Software/algorithm merely manipulates numbers or solves an algorithm

PTO will not consider it within SC

Statutory Class [SC] (5) –

introduce software process

• Software patentability case – analyzes EKG, spectrographic, seismic, or data bit

signals, controls a milling machine, creates useful images on a PC screen, the printing formats (math formulae), recognizes patterns or voices, or selects stocks that will beat an index

• Software non-patentability case – Number of crunches, non-useful curve, calculates

distances without any hardware involved …

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Statutory Class [SC] (6) –

software process (algorithm)

• Successful case on algorithm

– Statutory subject matter (SSM)

• The main patent court determined an algorithm for making a smoother diagonal line on a monitor as it look well

• A general-purpose computer data structure that organizes information into different categories within infinite number – Human can control the selection

– Key-point: hardware must be substantially involved

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In re Alappat, 33 F.3d 1526 (CAFC 1994)

In re Lowry, 32 F.3d (CAFC 1994)

Statutory Class [SC] (7) –

Internet & business method patents

• Business method is also difficult to patent as software patent

– Because they both involve math, formula or algorithm

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US5193056, 1993, Data processing system for hub and spoke financial services configuration

State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), cert. denied 119 S.Ct. 851 (1999)

Calculating “data relationship” about portfolio (Hub) with

many different mutual funds (Spokes)

Summary

• Discuss about Secret invention -> patentability

– The principle secret ->

– build working models ->

– introduce how to review patentability

• Including 4 legal requirements – statutory class (focus on process), utility, novelty, unobvious

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HW

• Try find some news about your invention

– Write down to contribute it for team & yourself

• (1) Related the best one in your team

• (2) Related your invention

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Reference

• David Pressman, chapter 4 &5, “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

• Analysis “State Street Bank & Trust Co. v. Signature Financial Group, Inc.”, 149 F.3d 1368 (Fed. Cir. 1998), – Lang CN: http://iip.nccu.edu.tw:8090/iip/document/case_1999_1_23.pdf – Lang EN:

http://en.wikipedia.org/wiki/State_Street_Bank_v._Signature_Financial_Group

• Blog: http://fungsiong.blogspot.com/ – Introduce hybrid TV (hbbTV) including widget design, Android technology

(API), system, ecosystem, framework, service, application…, – Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile

• About how to teamwork

– Some programming info. as Apache wookie, refactoring tech, CE-HTML, a solution about removing a backdoor “Trojan” & surveillance paper

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