patenting wireless technology (cont) dr. tal lavian tlavian [email protected] uc berkeley...
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Patenting Wireless Technology (cont)
Dr. Tal Lavian
http://cs.berkeley.edu/[email protected]
UC Berkeley Engineering, CET
Last Week: What is a Patent?2
A form of intellectual propertyA grant of an exclusionary property right to
an inventor by the governmentPrevents the use of an invention by others for
the duration of the patent In return, the inventor must fully disclose the
details of the invention to the public (the quid pro quo)
Last Week: What Can Be Patented for Wireless Mobile Devices?
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“Everything under the sun made by man.” Products: things Processes: ways to make things Methods: ways to do things
Improvements: better things Software and operating system
Both the above applies to wireless mobile devices!
Last Week: Elements of a Patent Application4
http://www.patentlyo.com/patent/2005/12/what_are_the_pa.html
PatentEng-Berkeley-LavianWeek 6: Validity and Infringement 5
INVENTORS
CLASSIFICATIONNUMBERS
PRIOR ART REFERENCES
TITLE
ABSTRACT
PRIOR ARTCONTINUED
ASSIGNEE
The Patent Process
Application Preparation Application Patent Office Rejections Patent Granting Patent Challenges
Application Preparation
Loop until perfect (order may vary): Clarify the invention Draft Claims Prior Art Search & Review Describe Preferred Embodiment Rough drawings
Prepare Final Drawings Prepare Application forms & fees “package”
Application Submission Submit “package” by certified mail
Get return receipt & acknowledgement from PTO The long wait, at least a year, maybe two
Depends on “art unit” work load and other factors Protected from date of filing—maybe.
Easier for an application to be challenged than after patent that has been granted
Application can be contested by evil-doer
http://people.bu.edu/nathanas/HSchwadron/
Application Rejections
The patent examiner will review the patent according to PTO rules, often consults with other examiners and supervisor
Patents are almost always rejected at first Need to respond by “overcoming” the rejection:
Explain why rejection is invalid Prior art cited does not applyWhy it would not be obvious to one skilled in the art
Modify, add or delete claims Possible to talk with examiner, best done with attorney or
patent agent (keep record of what was agreed to & copy examiner)
May loop through this process until patent granted or have reached the limit on allowed number of “office actions”
Patent Granted - Hooray!!
Once notified that the patent is granted Legal protection begins Presumed to be a valid invention Patent and “history file” becomes publicly
available Individual inventors deluged with sales offers:
Buy engraved plaques, mugs, etc Sign up with companies to market your invention
(for a fee)
The Patent Challenge
When the patent is “asserted” against a product, the accused company will usually challenge the patent.
Review the patent and history file Look for prior art that would invalidate the patent Challenge PTO finding on obviousness or other errors Can patent be implemented by one skilled in the art If they can find something, they may:
use this to repel assertion ask PTO to “re-examine” the patent
May occur during negotiations or after a lawsuit is filed. A patent that survives a “legal” challenge becomes more valuable
because it has been “tested” But very expensive and risky.
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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
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Claims & Elements I
Patent must contain at least one claimUsually contains several claims
Claims are numbered and clearly distinctInfringement of single claim is sufficient for infringement
Need not infringe two or all claimsEach claim usually contains several elements
Infringement requires correspondence between each element of a claim and an element of the allegedly infringing product or process
Two Basic Types of Claims
1. Independent Claims Stand by themselves Comprise a set of limitations (or elements) that define the
scope of an invention. Example: Claim 1 - An apparatus for moving objects consisting
of one or more round disks with axles connecting said round disks.
2. Dependent Claims Depend on an independent claim or another dependent claim Add additional limitations Example: Claim 2 – Apparatus of Claim 1 where the said axles
are affixed to said round disks using a ball bearing assembly.
What is Not Patentable18
o Laws of nature (wind, gravity)o Physical phenomena (sand, water)o Abstract ideas (mathematics, a philosophy) o Algorithms (e.g., abstract math)o Anything not useful, novel and non-obvious (perpetual
motion machine)o Inventions which are offensive to public morality or designed
for an illegal activityo Inventions that cannot be implemented using
current technology (enablement)
http://mimiandeunice.com/2012/08/27/achoo-again/
Types of Patents19
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
Design Patent Example(What are the differences from a Utility Patent?)
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http://www.theverge.com/2012/11/19/3659382/apple-design-patent-on-virtual-page-turn
Design Patent Example21
http://www.theverge.com/2012/11/19/3659382/apple-design-patent-on-virtual-page-turn
Patents Must Be Useful23
oUseful – process, methodo Meets a need or solves a problemo Fills current or anticipated needo Can be “reduced to practice”, operated
or enabled( e.g., can be built and function)
o Can be an improvement (better mousetrap)
Utility Patents Must Be Novel24
oMust be new oNot done before in substantially the same way
oNo “Prior Art”oNot known to the public before it was invented
Not described in a publication (*)Not used or offered for sale publicly (*)
o Includes your own work
* more than one year before filing patent application
Novelty Considerations25
o How “broad” is the inventiono What problem it solveso How it solves the problemo If the structure is known, are elements used in a
new way?o If the function is known,
is a new problem solved?
http://www.cartoonistgroup.com/store/add.php?iid=98295
Utility Patents Must Be Non-Obvious26
o Would not have been obvious to one “skilled in the art” to do thiso Includes combining different prior art
o Must not be trivial or insignificanto Examples
Substituting one material for another Changing the size (miniaturization) Changing implementation (software or
hardware, custom ASIC)
How Much Prior Art27
oFor Anticipationo A single piece of prior art practices all the elements of a (single) claim (e.g., the claim “reads on” this single reference)
oFor Obviousnesso Usually more than one reference used to
practice the claimo Could be one reference PLUS the knowledge
of the “Person Having Ordinary Skill in the Art”, aka PHOSITA