IP PORTFOLIO MANAGEMENTbipasiaforum.com/doc/2016/programme/Day 1/IP... · IP PORTFOLIO MANAGEMENT How to develop and manage one US Patent Peter Tong . . Patent: A global asset class

IP PORTFOLIO MANAGEMENT

How to develop and manage one US Patent

Peter Tong www.ipventure.com

Patent: A global asset class

• Yahoo’s potential sale to Verizon

• Huawei v Samsung in May, and Samsung v Huawei in July

• In June, Shenzhen Baili v Apple

• As you are filing an application

• After filing

• After receiving a notice of allowance

• Correct mistakes

How to develop and manage one US Patent

As you are filing an application

• Inventorship

• Provisional application

• Be meticulous

• Ways to implement your invention

• Types of claims

Be meticulous: Directional Sound

Be meticulous

• The frequency of the ultrasonic signals are at 40kHz.

• As an example, the ultrasonic signals are at 40 kHz. In other embodiments, the frequencies of the ultrasonic signals are higher, such as between 100 kHz to 1 MHz….

Ways to implement your invention

• a pair of prescription glasses with a touch-sensitive input surface

• sunglasses, fit-over glasses, safety glasses,

goggles, and headsets

Eyewear with touch-sensitive input surfaces

Types of claims: Cloud computing for learning

Types of claims

1. A computing apparatus comprising: a first computing device … to: receive a request from a user using a second computing device for learning content ... receive a request from an entity using a third computing device for materials on the user ...

2. A computing apparatus as recited in claim 1, wherein the content includes materials on a product of the entity.

After filing

• New ideas • Prosecuting the application

After receiving a notice of allowance

• Claims • Continuation

Continuation: Hands-free Text Messaging

Continuation

A method for facilitating text messaging … comprising: receiving an incoming text message … wirelessly; converting the incoming text message to an incoming audio message; playing the incoming audio message … via a head-set; … A method for facilitating text messaging … comprising: receiving an incoming text message … wirelessly; converting the incoming text message to an incoming audio message; playing the incoming audio message … via a speaker; …

Mistakes in the patent

• PTO mistakes • Your mistakes

Your mistakes: Eyewear with heart-rate monitor

Certificate of correction

A number of techniques have been described on stabing stabilizing the wire or the clip relative to the glasses. In one embodiment, the glasses could also be stabilized by a strap….

Reissue

• Prosecution options • Broaden reissue

Broaden reissue: Save Battery

Broaden reissue: Save Battery

A position acquisition device … comprising: a display …; a position detection unit …; a battery …; and a controller … determining whether to get position … based on a motion of the device and a battery level of the battery …. A position acquisition device … comprising: a position detection unit …; a battery …; and a controller … determining whether to get position … based on a motion of the device and a battery level of the battery ….

Supplemental Examination

• A substantial new question of patentability

• Pre-litigation cleansing

• As you are filing an application

• After filing

• After receiving a notice of allowance

• Correct mistakes

How to develop and manage one US Patent

IP PORTFOLIO MANAGEMENT

How to develop and manage one US Patent

Peter Tong

www.ipventure.com [email protected]