Defending your Rights

Defending your rights –

invention decision

Chen JingFung (Grace)

@csie.ntut.edu.tw 2012/05/31

Chapter 7-8, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825

Outline

• The journey for (IP) Protection

• The advantage for filing an application by you

• discussion the Pirate issue

• Other protection methods if non-patentability – some useful strategies: trademark, copyright …

• A patent application (lay inventors) to PTO – Some Patent application electronic forms

– Analyze details in a RPA

2 © 2012 [email protected] & cise.ntut

The proceeding for

Intellectual Property (IP) Protection

File a PPA Test the market for

up to a year and then consider RPA

Keep it a trade secret

File a design patent application

Use a clever trademark &

copyright coverage

Use distinctive “trade dress” for

unfair competition coverage

© 2012 [email protected] & cise.ntut

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Virtual protection physical protection physical protection

Virtual protection physical protection

• After making commercial evaluation & search, consider following alternatives – Advice: don’t give up you day job

The advantage for filing an application

• Why file a patent application before offering the invention to a manufacturer

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Offensive rights for your invention

• your invention will be defined in precise terms w/ formal drawing & be established your claim in PTO

Respect for your invention

• After showing your application, a manufacturer will think you’re a serious player

Have rights even if you sign a Waiver

• Your powerful rights against underhanded dealing by the manufacturer

Offer more so get more

• most manufacturers want a proprietary or privileged position (commercial advantage)

• They may to buy your invention with its coving patent application

inventor

corporate

Pirate issue

• Common misconception – Can’t patent (?), since someone will see

your invention, copy it & make it more cheaply

• Facts – Usually copiers copy successful products in the

marketplace by reverse engineering – A patent will enable you to stop their production or get

royalties from them

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Fig ref: klnce.edu

reverse engineering

Other protection methods if non-

patentability

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Commercial potential $$

Non-Patentability <- Close prior art but

not a dead ringer Record

conception properly

Provide a clever trademark Ex. registered mark®

& unregistered mark(TM, SM)

Obtain a design patent

TM for goods SM for services

Provide distinctive

”Trade Dress”

Provide copyrightable

labeling

Consider Trade secret

Submit your idea to

Quirky.com

Charge submitters idea = $10 Pay royalties on the sales

Trademark vs. Trade dress

Trademark Trade dress

Definition A brand name for product

A product’s physical appearance, including its size, shape, color, design, & texture

Online search tool

TIPO - trademark reference database USPTO – TESS (Trademark Electronic Search System)

example

SOL Disclaimer: “HELMET”

Thai life insurance http://www.thailife.com

七喜(7.Up) http://www.7up.com/

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7 Ref: answers.com/trademarkia.com/wememap.com

Copyrightable labeling

definition A legal concept by most governments, giving exclusive rights on the creator of an original work (i.e. “the right to copy”)

A non-profit organization which aim to protect the range of creative works available

coverage Exclusive rights • Produce copies or reproductions &

sell those copies (including typically, electronic copies)

• Import or export the work • Create derivative works • Perform or display the work publicly • Sell or assign these rights to others • Transmit or display by radio or video

Six major licenses of CC • Attribution (CC BY) • Attribution share Alike(CC BY-SA) • Attribution No Derivatives (CC BY-ND) • Attribution Non-Commercial(CC BY-NC) • Attribution Non-Commercial Share

Alike (CC BY-NC-SA) • Attribution Non-Commercial No

Derivatives (CC BY-NC-ND)

Arduino (CC BY-SA); Wikipedia (CC BY-SA)

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Green licenses have been ported Blue licenses are

being ported Sky licenses ports

planned

Ref: copyright(wiki)

History about expanding

copyrights (US)

Discussion – trade secret

• Keep it secret

• Effect of “patent pending” notice

• Disadvantage of keeping secret

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Trade secret – keep it secret

• While the patent application

– PTO must keep your patent application secret until it’s publish (18 month after filing Nov 29, 2000)

– Provided you’ve filed an NPR (Nonpublication Request)

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Filing patent application (RPA)

Published Applications

Issued Patents

Anyone copied it

Ask back money

Effect of “patent pending” notice

• No legal rights,

– but it is used by most manufacturers in order to deter competitors <- market practices

• However, make sure you don’t use a “patent pending” notice <- a criminal offense

© 2012 [email protected] & cise.ntut 11

Disadvantage of secret on

“hardware” invention vs. a process

• Someone can validly patent the hardware by a design around

– They also can sue you for patent infringement

• Keep secret (20 years) is not good way

– Under a new “prior user’s rights” status (35USC 273)

• If someone has a method patent, but you’ve used the method commercially for over one year

– You have a complete defense to any action for patent infringement on the method

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Test market before filing (?) -1

• Don’t recommend marketing before filing – Have less one year to run the test marketing

(“one-year rule”)

– You may get discouraged if market it unsuccessfully • Too discouraged to file a patent application and

therefore you’ll lose all rights

– Lose your foreign rights <- miss an absolute novelty requirement

– Anyone (Pirate) sees your product may copy it and file a fraudulent patent application on it

© 2012 [email protected] & cise.ntut 13

issuance of a valid patent

Test market before filing (?) -2

• Don’t recommend marketing before filing, there are business disadvantages when

– The product has a short/seasonal selling period or limited market life

– Test marketing may open an easily copyable product to competitors

– The cost (↑) of test marketing may outweigh

– Market conditions are changing so fast

• The results of a market test would soon be obsolete (Wall St. Journal, 1984)

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Invention decision flowchart

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Invent something Record conception => Build & test it

or filing PPA

Commercial potential (?)

Prepare a patent application

Patentable(?)

Try to sell invention & patent application to

manufacturer

Significant market novelty

Good trademark, trade dress,

copyright-labeling

Manufacture & distribute yourself

Without utility application

Manufacture & distribute

yourself

Try to sell it

Manufacture & distribute it

Prepare a patent application

Is invention discoverable final product

Keep details secret for 20 years

Prepare a patent

application

Filing before manufacturing

Manufacture & market

successful?

File a patent application

w/ 1 yr

Manufacture & distribute it

Keep as trade secret

Patent pending

Invent sth else

Invent sth else

A PATENT APPLICATION

TO PTO

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Lay inventors prepare a patent

application - essential points (1)

• The specification should be detailed enough including

– Description, operation of your invention & drawing will be able to make & use the invention after reading it

• Avoid “limiting statements”

– Not refer to “the invention” but only to “this embodiment

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Not indicate any field of the invention Not mention any problems with the prior art

You don’t know Your invention doesn’t solve

Lay inventors prepare a patent

application - essential points (2)

– Don’t state that any part is essential

• Indicate “one or more aspects”

• Indicate as many embodiments as possible

• The main claims should be as board as the prior art permits

• You should “sell” your invention by stressing all of its advantage in a non-limiting way – Be a new world founder

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Patent application - electronic forms

• PTO provides online patent forms over Internet via EFS-Web (Electronic Filing System)

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Form number Last updated introduction

PTO-2038 2012/05 Credit Card payment form & instructions for filing fee

SB05(PTO/SB/05) 2008/08 Utility patent application transmittal

SB17(PTO/SB/17) 2011/09 Fee transmittal (PTO/SB/17 removed “additional fees” because other PTO forms already provide)

SB17i(PTO/SB/17i) 2009/07 Processing Fee Under 37 CFR 1.17(i) Transmittal

SB17p(PTO/SB/17p) 2009/07 Petition Fee Under 37 CFR 1.17(f), (g) & (h) Transmittal

SB35(PTO/SB/35) 2009/07 Nonpublication Request(NPO) under 35 U.S.C. 122(b)(2)(B)(i) Send this if you want to keep secret (< 18 months after filing)

SB01(PTO/SB/01) 2009/04 Patent Application Declaration (PAD) form is a statement under penalty of perjury <- show you’re the true inventor SB01A(PTO/SB/01A) 2009/01

SB08* 2010/02 Information Disclosure Statement, list of prior art cited by applicant & copies; the form will ask you the potentially affect novelty and nonobviousness

SB14 EFS-WEB 2008/11 Application data sheet (ADS) to provide the bibliographic data (inventors’ names, address ..) + PTO/SB/01A

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Regular patent application – sections(1

• Introduction – Background - Prior Art: State any know problems that the

invention definitely solves, discuss & criticize the relevant prior art • Previous patents & other relevant developments in the same

technological areas • Field of invention was previously required but is no longer need (not

use)because it can link with prior art (might not be relevant)

– Advantages (optional)

• The summary should briefly describe the invention as claimed

• Detailed description – Drawings (figures)

• a brief listing & may include the subsection below, reference numbers

– Reference numbers (optional but desirable) • Drawing numbers that designate the respective parts of your

invention (Ex. 10 motors) © 2012 [email protected] & cise.ntut

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Regular patent application - sections(2

• Detailed description

– A narrative description of the structure of the invention’s main embodiment including subsections

• Description for first embodiment + Figs. 1-X

• Operation for first embodiment – The detailed description explains how the main

embodiment of the invention works or operates

• Description for additional embodiment + Figs. Y-Z – Describes the structure of an alternative embodiment

• Operation for additional one – How to operate the alternative embodiment

• … 21

3 subsections (operation, description, operation…) can extend as a train

Regular patent application - sections(3

• Conclusion, ramifications, and scope – Summarizes the invention’s advantages – The alternative physical forms or uses it can take – A broadening paragraph to remind any judge

• Should not be limited to the particular form(s)

• Claims – These are precise sentence fragments that delineate

the exact nature of your invention

• Abstract – A brief summary of the entire specification – It is technically considered part of the specification

• Not include this additional data – Reference cited, field of search… <- PTO will add this

data when they print the patent © 2012 [email protected] & cise.ntut

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After PTO received your application

• Office Action will do one or more of following – Object to one or more informalities of your application

• Ex. Don’t indicate your citizenship(nationality) properly

– Object to one or more aspects of your specification and/or drawings

– Reject some or all of your claims • Imprecise language • Lack of patentability over prior art

• Submit an “Amendment” – Make changes, additions, or deletions in the drawings,

specification, or claims, and/or – Convince the examiner that the Office Action was in error

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PTO run a first exam for doc.

Examiners Your application

E-file

Traditional postal

2

1

3 Amendment

Summary

• Integrating the journey on IP protections to discuss the strategies

– cope pirate issue & how to handle a non-patentability case (ex. Trademark, copyright, trade secret…)

• Give some suggestions for lay inventors to prepare a patent application

– Some online patent application forms & the template of RPA & PTO’s response after you sent a application

© 2012 [email protected] & cise.ntut 24

Reference

© 2012 [email protected] & cise.ntut 25

• David Pressman, chapter 7-8, “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 -> WM2Patent,

• Patent Requirement (novelty & nonobviousness),

• Patent search (classification search, foreign protection to gain your skill, Inquiry for patent search, polishing search skills)

• Blog: http://fungsiong.blogspot.com/ – Introduce hybrid TV/Smart TV (hbbTV) including

• widget, Android(API), system, ecosystem, framework, service, application…

– Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile • About how to teamwork

– Some programming info such as • Apache wookie, refactoring tech, CE-HTML, a solution about removing a

backdoor “Trojan” & surveillance paper