uw ip management certification program managing patent creation april 24, 2008 james robarts...
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UW IP Management Certification Program
Managing Patent Creation
April 24, 2008
James RobartsExcelsior Bonifico Company
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
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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Case Study – Oct 2001
2000 ’01 ’02 ’03 ’04 ’05 ‘06
Zen ShipCreative
Technology
AppleiPod Ship
1 year
Presented to U of WA IP Cert courseApril 24, 2008
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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”
Presented to U of WA IP Cert courseApril 24, 2008
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Field Codes
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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Claim Architecture
Apple Application
Creative Technology Extract
Presented to U of WA IP Cert courseApril 24, 2008
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Case Study – Claim Comparison
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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Case Study – Comparing Wrappers
Apple
Creative Technology
Presented to U of WA IP Cert courseApril 24, 2008
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Case Study – Current Status
Microsoft
2000 ’01 ’02 ’03 ’04 ’05 ‘06
Creative Technology
Apple
Patent Granted
Patent RejectedNon-provisional
Filed
Non-provisional Filed
Product Ship
Patent Publish
Non-provisional Filed
Provisional Filed
Product Ship
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
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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.
Presented to U of WA IP Cert courseApril 24, 2008
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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.”
Presented to U of WA IP Cert courseApril 24, 2008
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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?
Presented to U of WA IP Cert courseApril 24, 2008
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Referenced by 568
Presented to U of WA IP Cert courseApril 24, 2008
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How to search
http://www.uspto.gov/web/offices/ac/ido/ptdl/step7.htm
http://www.lib.utexas.edu/engin/patent-tutorial/index.htm
Presented to U of WA IP Cert courseApril 24, 2008
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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
Presented to U of WA IP Cert courseApril 24, 2008
Copyrights © Excelsior Bonifico Company 29 of 26
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
Presented to U of WA IP Cert courseApril 24, 2008
Copyrights © Excelsior Bonifico Company 30 of 26
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
Presented to U of WA IP Cert courseApril 24, 2008
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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?
Presented to U of WA IP Cert courseApril 24, 2008
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Analysis Tools – Tech/Benefit Matrix