Patenting, Search & Interpretation

Informatics of Technical Design

The Metes & Bounds of IP

Uses for this Research

Transparency of Design Information

• Trade Secrets vs. Patents vs. Copyright– T/S have IP usefulness ONLY if confidential – Inventions & Patent Appls Secret for 18 mos after filing– © Protected Works vary

• Most accessible through purchase, display or reverse engineering

– Reverse Eng. Exceptions: NDA; DMCA’s tech protects; EULA

• Technical protections may obscure some works – Most T/S originally expressed in secret documents – Software: lines of code obscured in Libr of Cong submissions

• Prior Art presumed known to Persons of Ordinary Skill in the Art – The Key “Mythical” Player in Patents

Patent Qualification

• To Qualify for Patent Monopoly, Inventor Must Prove to patent regulator(s): – New & Useful, Novelty, Non-Obvious

(inventive)

• Patent Prosecution is an Iterative Process – Filing, Claims, Specifications offered & tested– No patent for invention in public domain – Qualification Protects Storehouse of

Knowledge – Testing & Challenges by patent regulator

Public Knowledge Before Invention Date

Prior Art

• Publicly known, publicly used, published or patented before invention date

• Novelty: –refutes or confirms if in public domain

• Obviousness: –sets state of the art to measure “inventiveness,” “genius” & “obviousness”

Design Due Diligence

• Plagiarism, Infringement & Build Disciplines– Standing on the Shoulders of Giants

• Unless accidental discovery, most design is built on prior discovery & invention – Rigor Requires Search for & Citation to Prior Art

• Documenting the Invention– Inventor’s notebook (bound, attested) chronicling

conception, reduction to practice (e.g., working model, embodiment)

• Essential to establish 1st to invent • Now relevant to inventorship, cited prior art, fraud on PTO

Filings• Provisional Patent Application

– Description, no claims needed, sets filing (invention) date for priority in interferences

– Not as successful as hoped in AIPA of 1999• Patent Applications

– Expensive Full Explication (Disclosure) – Fast Track-Patent Prosecution Highway

• eHavioral Advertising Patents:– Bagby John W., Heng Xu & Terence R. Melonas, Incentivizing

Innovation in Wireless Advertising Messaging (WAM): Balancing Privacy Enhancing Security with Regulation, Privacy Law Scholars Conference 2009, Berkeley CA, June 4, 2009.

– Xu, Heng, John W. Bagby & Terence R. Melonas, Regulating Privacy in Wireless Advertising Messaging: FIPP Compliance by Policy or by Design? LNCS Proceedings. Vol# 5672, Privacy Enhancing Technologies (PETS), 9th Int’l Symposium, pp. 19-36 (2009)

– EX: ‘054 - Method and System for Schedule Based Advertising on a Mobile Phone, U.S. Patent No. 6,889,054

Patent Databases

• uspto.gov

• Google Patents

• patents.com

• freepatentsonline.com

• patentstorm.us

• How to read a patent – http://www.patentlens.net/daisy/patentlens/202.html

Patent Application Contents

• Title of invention• Summary, background, prior art, objective,

advantages• Drawings & description• Claims (enablement) - sufficient disclosure

to enable one skilled in the art • Best Mode (specifications) – particular

embodiment contemplated by the inventor at the time of filing

• Inventor signed oath; IDS (material info)

Office Actions

• The File Wrapper– Record of Office Actions– From Physical File Folder

• Now PTO Server Folder, Applicant & Patent Attorney/Agent

• Subject of Much Litigation– Including Infringement Between Inventor or

Assignee and Alleged Infringer

Empirical Patent Research

• The Recognized Patent Fields• Use Patent Classification System• KWIC & Boolean Search Inventors

– Assignee (Current Owners)

• Map Patent Thicket– THE Data of Valuable Technologies

• Literature & News • Patent Litigation Cases

HR1429 Patent Reform: a Watershed?!?

• 1st to File Winners – Big, Well-Financed Tech Cos– The World Order with harmonized patent law

• 1st to Invent Losers – Small Cos & Individual Inventors had a chance– BUT some provisions to study & ameliorate their plight

• Prior User Rights expanded from BMP to all subject matters

• New Procedures Empowering Outsiders to Invalidate “Bad Patents”

• Faster Prosecution Schedules; Lower Fees, Examination Best Practices

History: Patents & Reform

• AIPA 1999– U.S. Provisional Patent Apps auth to conform to world; Bus.

Mthd. Exception; 18 mo appl publication;

• 1952: inventive (genius) std replaced by non-obvious• 1911: 1st million U.S. patents • 1890: Sherman A-T expected to diminish patent

monopolies• 1870: USPTO gains rulemaking auth• 1836: Pat.Ofc moved to State Dept• 1793: qualification by examination abandon• 1790: 1st US patent act & 1st patent granted

– Samuel Hopkins of Philly potash production (soap)

Patent Litigation

• As Vindication

• As Strategic Bargaining Tool

• As Source of Valuation

• As Source of information– Validity– Claims: Parsing, Interpretation

• As Dead Weight Social Welfare Loss

Patentability

• Novel §102

• Non-Obvious §103

• Human-made, not naturally occurring1. Process (s/w, BMP)

2. Machine

3. Manufacture

4. Composition of Matter (chemicals, materials, drugs)

Patent Claims

• Description Specifying Boundaries of Property Rights

• Conflicting Incentives in Claims Drafting – Patentee: broad to preempt competition – Society: narrow to prevent monopoly

• Drafting Strategy: start w/ broad, narrow • Description of Tangible Embodiment &

Functioning

• Means for Performing a Process

Best Mode

Specifications: • Subjective (inventor’s) optimal method • Preferred embodiments • Specific instrumentalities & techniques • Trade secrets unless held by another • Unneeded: cookbook/production

schedule • Best types/brands unneeded if

ordinarily skilled artisan knows

Confidentiality of Application Materials

• Trade Secrecy Maintained?

• Most nations - confidential only for 18 mos after filing– In the U.S.:

• Confidential only for 18 months if application is also filed in country that publishes files after 18 months

• Otherwise, confidential until patent issues, then publicly available

– Exception: national security matter

PTO Processing

• Initial Screening for national security or export controls – Secrecy order restricts public disclosure

• Examination– Iterative Revisions: then grant/rejection

• Appeal

• HR1249: Outsiders may question validity & submit prior art

Reasons for Patent Search

• Pre-requisite to Filing by Inventor• Essential to Address Validity

– Support as inventor assignee– Attack as infringer or competitor

• Understand the Art (discipline, tech, field) • Engage in Strategic IP Behavior• Research Technologies

– Ownership, value, blockage to innovation

Role of Infringement Analysis

• Defend Property Rights

• Block Competitors

• Improve Strategic Position in IP Negotiations– Implied Threat in Cross-Licensing

• Assess Liability Risk

Literal Infringement

• Rule of Exactness – Lay person’s infringement definition

• Rule of Addition – Identity of elements w/ some addition

• Rule of Omission – No infringement if claimed element missing

• Blocking Patents – Original & improvement must cross-license

Infringement: Equivalents

• Performs substantially identical function in substantially identical way, obtains same result

• Non-Literal Infringement – Replacement w/ similar feature

– Skirts patent’s spirit

– Obvious changes