patenteng-berkeley-lavian week 5: patent anatomy & strategy 1 patent engineering ieor 190g cet:...

PatentEng-Berkeley-Lavian Week 5: Patent Anatomy & Strategy 1

Patent EngineeringIEOR 190G

CET: Center for Entrepreneurship &Technology

Week 5

Dr. Tal Lavian(408) 209-9112

[email protected]

321 HavilandMondays 4:00-6:00


Criteria – Legal Standards• Novelty

– Does not exist in the prior art

– Not previously disclosed to public

– OK if Modification/Improvement of an existing product/process, or use of something “old” in new/different way

• Usefulness - Utility - Performs a useful function

• Non-obviousness

– Non-trivial - It would not have been obvious to one skilled in the art to combine multiple items in the public domain to arrive at or show the invention

– Not Engineer’s normal sense of “obviousness”!

• Enabled


Types of Patents

Type Is for Term #s

Utility Function, use

20 years 6,214,874

Design Appearance 14 years D202,331

Plant Asexually reproduced

20 years PP10123

The Patent Process

Application Preparation Application Patent Office Rejections Patent Granting Patent Challenges

PatentEng-Berkeley-Lavian 4Week 5: Patent Anatomy & Strategy

Title, Filed, Field of Search Title

The title is short (<500 characters) may be terse or misleading

Filed – date is critical for establishing prior art (priority date) Generally must be in public domain 1 year before file date

Field of Search Numerical classifications to which patent applies or is cross-

referenced These are PTO numbering scheme, classes and sub-classes Useful for doing prior art searches of patents


References & Abstract References

Other patents cited in the disclosure Optionally other material

Abstract Brief description of the technical disclosure of the

invention Permits the reader to quickly determine the nature

and gist of the invention Not part relied upon for PTO or legal analysis

May not exceed 150 words. Often it is a paraphrase of the first claim



INVENTORS

CLASSIFICATIONNUMBERS

PRIOR ART REFERENCES

TITLE

ABSTRACT

PRIOR ARTCONTINUED

ASSIGNEE

Drawings Drawings illustrate the invention

at least one required They typically show the “preferred embodiment” of

each element of the invention. May include bock diagrams, schematics, flow-charts Must be drawn according to strict PTO rules

Line width, font size, etc Can be done with Visio or similar drawing programs Can submit preliminary drawing with initial

application and follow up later with final drawings (after first rejection).


Disclosure - Background Describe the “field of invention”

Short description of the area invention applies to Describe the prior art

What has been done before and why the present invention is different

Prior art may be from other patents or ANY other public source (old magazine articles, technical papers, text books, product literature, etc)

Explain why the invention is useful What problem it solves or improvements made


Disclosure -Brief Introductions

Brief Summary of the Invention Summarizes the specific invention being claimed Must be complete enough not to limit scope of

claims Brief Description of Drawings

Describes what is shown in each drawing and identifies the type of drawing (eg: block diagram, cross section, ...)


Disclosure -Detailed Description

This is the main description of the how the invention works: Describes one or more “preferred embodiments”

Also mentions other alternatives. Defines terms used, important to interpret claims It must be detailed enough for one skilled in the art to

construct or use the invention. (enablement) Usually relies on detailed references to figures.


PatentEng-Berkeley-Lavian 12

Specification & Claims

• Specification consists of the Description and claims with parts such as – Field of the Invention, – Background of the Invention, – Summary of the Invention, – Detailed Description of the Preferred Embodiments of the Invention

• Claims - describe the structure of an invention in precise terms– in one sentence define the invention– the more precise, the better

Week 5: Patent Anatomy & Strategy


What is the Patent’s Specification?

• The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old

• It literally must “teach” one skilled in the art how to practice, make or recreate the invention

• Includes statements re field of the invention, problem addressed or solved by the invention, and detail regarding the solution comprising the invention

Copyright © 2008 Duane R Valz. All Rights ReservedPatentEng-Berkeley-Lavian


What is the Patent’s Specification?

• It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or functional principle whenever applicable

• Detailed written description typically corresponds to illustration(s) of invention and/or prior art through numerical annotations

• It must set forth the best mode contemplated by the inventor for carrying out the invention



Specification – Other Embodiments

The embodiments described include means for receiving, storing and transmitting both audio and video signals. However, the invention encompasses apparatus which can store and transmit video signals only and apparatus which can store and transmit audio signals only. An embodiment designed to store and compress audio signals is illustrated in FIG. 4. Referring to FIG. 4, an audio signal source 70 (a tape recorder, microphone, record player, etc.) is coupled to a digitizer and compressor circuit 72, which converts the analog signal to a digital signal and compresses the digital signal in a manner similar to VCU 12 described above. The digital compressed signal can then be stored in a memory 74. Of importance, data from memory 74 can be transmitted by a fiber optic transceiver 76, or by a microwave transceiver 78 at an accelerated rate. …

* * *

In the embodiment of FIG. 4, data can also be loaded from memory 74, via a modem 79 over a conventional phone line 80. Data can also be received from phone line 80, fiber optic transceiver 76 or microwave transceiver 78, loaded into memory 74, and converted to an analog signal by circuit 72, to be listened to via an audio monitor 82, or to be stored on an audio tape cassette 84 or other storage media.

5,164,839

Column 12, lines 12-45



What are the Patent’s Claims?

• The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention

• The portion of the patent setting forth the claim or claims is an important part of the patent, as it is the claims that define the scope of the legal protection afforded by the patent and around which questions of infringement are judged by the courts

5,164,839 Column 13


Claims

Claims are the most important part of the patent. Precisely defines the invention Meaning of words, phrases and punctuation are

critical

Court cases often turn on interpretation of claims Drafting claims is a sophisticated art

Narrow enough to exclude all prior artBroad enough to be useful

Applies to many products or variationsHard to design aroundAble to survive challenges.



CLAIMS

SPECIFICATION


Identify Key Features of Product

• Ensure “freedom to operate” for those key features likely to be developed by others

Identify Concepts Having Licensing Potential, For Example:

• Those that may or will be included in an industry standard

• Those that are likely to be used by third parties

• Those that are unlikely to be a product differentiators

• Those that are outside core business

Identify Solutions Having Defensive Potential

• Those solutions that read on key competitor’s products and/or services (even if we do not plan on using / commercializing them)

Invent the Future!• One fundamental patent can support an organization for up to 20

years!

Developing a Patent Filing Strategy


First to File• Many jurisdictions award patents to the first to file an

application for the invention (and the US is moving in this direction)

Earliest Inventions Most Valuable• Broadest concepts are the most valuable. One should

not, therefore, delay filing simply because unrealized improvements envisioned

No Need to Test Invention or Build Prototype• There is no requirement to prove that an invention works

in order to obtain a patent• A patent must merely provide instructions for one of skill in

the art to practice the invention without undue experimentation

When to Disclose



Invention = A New Solution to a Problem

• Categories of Inventions

• Articles of Manufacture, Machines, Compositions and Processes

• Only need a single difference over the prior art

• Can include business methods and services

• New Uses for Known Articles of Manufacture, Machines, Compositions and Processes

• Test for Novelty – Same thing, used in same way, for same purpose

• Improvements

• Even if based on invention patented by another

• Software



Assessing Value – Influential Factors

• Likelihood of third parties using the solution (now or in the future)

• Demand for the solution (cost reduction and/or new feature)

• Whether “base invention” patented (fundamental v. improvement)

• Key enabling / lynchpin solution

• Whether the invention is of general applicability

• Whether the invention is useful to a key competitor



Assessing Value – Influential Factors cont’

• Breadth of the solution (available alternatives)

• Likelihood of solution being an essential feature of an industry standard

• Whether infringement is detectable

• Whether invention outside core industry

• Simplicity of solution

• Importance of innovation to future company products and / or services



Assessing Novelty

• Determine broadest invention• Determine major problems solved and technical

means for doing so• Identify closest known prior art• Determine broadest inventive concepts• Recall: Consider functionality and problem solved• If structure known, consider whether elements used

in new way?• If function also known, consider whether new

problem solved?



What inventions are important? • Inventions are evaluated on three key criteria:

– Strategic thrust or importance to the company or competitors

• Is the invention related to parts of the business that we believe will have long term importance?

– Inventive value• How significant is the invention? Minor

improvement or new technology?• Is it the basis for a standard?

– Commercial value• How much money can we charge others to use

the invention?


patenteng-berkeley-lavian week 5: patent anatomy & strategy 1 patent engineering ieor 190g cet:...

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