Patenting, Search
& Interpretation
Informatics of Technical Design
The Metes & Bounds of IP
Uses for this Research
Transparency of
Design Information
• Trade Secrets vs. Patents vs. Copyright
– T/S have IP usefulness ONLY if confidential
– Inventions & Patent Appls Secret for 18 mos after filing
– © Protected Works vary
• Most accessible through purchase, display or reverse
engineering
– Reverse Eng. Exceptions: NDA; DMCA’s tech protects; EULA
• Technical protections may obscure some works
– Most T/S originally expressed in secret documents
– Software: lines of code obscured in Libr of Cong submissions
• Prior Art presumed known to Persons of Ordinary
Skill in the Art
– The Key “Mythical” Player in Patents
Patent Qualification
• To Qualify for Patent Monopoly, Inventor
Must Prove to patent regulator(s):
– New & Useful, Novelty, Non-Obvious
(inventive)
• Patent Prosecution is an Iterative Process
– Filing, Claims, Specifications offered & tested
– No patent for invention in public domain
– Qualification Protects Storehouse of
Knowledge
– Testing & Challenges by patent regulator
Public Knowledge
Before Invention Date
Prior Art
• Publicly known, publicly used, published or
patented before invention date
• Novelty:
–refutes or confirms if in public domain
• Obviousness:
–sets state of the art to measure
“inventiveness,” “genius” & “obviousness”
Design Due Diligence
• Plagiarism, Infringement & Build Disciplines
– Standing on the Shoulders of Giants
• Unless accidental discovery, most design is built
on prior discovery & invention
– Rigor Requires Search for & Citation to Prior Art
• Documenting the Invention
– Inventor’s notebook (bound, attested) chronicling
conception, reduction to practice (e.g., working
model, embodiment)
• Essential to establish 1st to invent
• Now relevant to inventorship, cited prior art, fraud on PTO
Filings
• Provisional Patent Application
– Description, no claims needed, sets filing (invention) date for priority in
interferences
– Not as successful as hoped in AIPA of 1999
• Patent Applications
– Expensive Full Explication (Disclosure)
– Fast Track-Patent Prosecution Highway
• eHavioral Advertising Patents:
– Bagby John W., Heng Xu & Terence R. Melonas, Incentivizing Innovation in
Wireless Advertising Messaging (WAM): Balancing Privacy Enhancing
Security with Regulation, Privacy Law Scholars Conference 2009, Berkeley
CA, June 4, 2009.
– Xu, Heng, John W. Bagby & Terence R. Melonas, Regulating Privacy in
Wireless Advertising Messaging: FIPP Compliance by Policy or by Design?
LNCS Proceedings. Vol# 5672, Privacy Enhancing Technologies (PETS),
9th Int’l Symposium, pp. 19-36 (2009)
– EX: ‘054 - Method and System for Schedule Based Advertising on a Mobile
Phone, U.S. Patent No. 6,889,054
Patent Databases
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uspto.gov
Google Patents
patents.com
freepatentsonline.com
patentstorm.us
How to read a patent
– http://www.patentlens.net/daisy/patentlens/202.html
Patent Application
Contents
• Title of invention
• Summary, background, prior art, objective,
advantages
• Drawings & description
• Claims (enablement) - sufficient disclosure
to enable one skilled in the art
• Best Mode (specifications) – particular
embodiment contemplated by the inventor
at the time of filing
• Inventor signed oath; IDS (material info)
Office Actions
• The File Wrapper
– Record of Office Actions
– From Physical File Folder
• Now PTO Server Folder, Applicant & Patent
Attorney/Agent
• Subject of Much Litigation
– Including Infringement Between Inventor or
Assignee and Alleged Infringer
Empirical Patent
Research
• The Recognized Patent Fields
• Use Patent Classification System
• KWIC & Boolean Search Inventors
– Assignee (Current Owners)
• Map Patent Thicket
– THE Data of Valuable Technologies
• Literature & News
• Patent Litigation Cases
HR1429 Patent Reform:
a Watershed?!?
• 1st to File Winners
– Big, Well-Financed Tech Cos
– The World Order with harmonized patent law
• 1st to Invent Losers
– Small Cos & Individual Inventors had a chance
– BUT some provisions to study & ameliorate their plight
• Prior User Rights expanded from BMP to all
subject matters
• New Procedures Empowering Outsiders to
Invalidate “Bad Patents”
• Faster Prosecution Schedules; Lower Fees,
Examination Best Practices
History: Patents &
Reform
• AIPA 1999
– U.S. Provisional Patent Apps auth to conform to world; Bus.
Mthd. Exception; 18 mo appl publication;
• 1952: inventive (genius) std replaced by non-obvious
• 1911: 1st million U.S. patents
• 1890: Sherman A-T expected to diminish patent
monopolies
• 1870: USPTO gains rulemaking auth
• 1836: Pat.Ofc moved to State Dept
• 1793: qualification by examination abandon
• 1790: 1st US patent act & 1st patent granted
– Samuel Hopkins of Philly potash production (soap)
Patent Litigation
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As Vindication
As Strategic Bargaining Tool
As Source of Valuation
As Source of information
– Validity
– Claims: Parsing, Interpretation
• As Dead Weight Social Welfare Loss
Patentability
• Novel §102
• Non-Obvious §103
• Human-made, not naturally occurring
1.
2.
3.
4.
Process (s/w, BMP)
Machine
Manufacture
Composition of Matter (chemicals,
materials, drugs)
Patent Claims
• Description Specifying Boundaries of
Property Rights
• Conflicting Incentives in Claims Drafting
– Patentee: broad to preempt competition
– Society: narrow to prevent monopoly
• Drafting Strategy: start w/ broad, narrow
• Description of Tangible Embodiment &
Functioning
• Means for Performing a Process
Best Mode
Specifications:
• Subjective (inventor’s) optimal method
• Preferred embodiments
• Specific instrumentalities & techniques
• Trade secrets unless held by another
• Unneeded: cookbook/production
schedule
• Best types/brands unneeded if
ordinarily skilled artisan knows
Confidentiality of
Application Materials
• Trade Secrecy Maintained?
• Most nations - confidential only for 18 mos
after filing
– In the U.S.:
• Confidential only for 18 months if application is also
filed in country that publishes files after 18 months
• Otherwise, confidential until patent issues, then
publicly available
– Exception: national security matter
PTO Processing
• Initial Screening for national security
or export controls
– Secrecy order restricts public disclosure
• Examination
– Iterative Revisions: then grant/rejection
• Appeal
• HR1249: Outsiders may question
validity & submit prior art
Reasons for Patent
Search
• Pre-requisite to Filing by Inventor
• Essential to Address Validity
– Support as inventor assignee
– Attack as infringer or competitor
• Understand the Art (discipline, tech, field)
• Engage in Strategic IP Behavior
• Research Technologies
– Ownership, value, blockage to innovation
Role of Infringement
Analysis
• Defend Property Rights
• Block Competitors
• Improve Strategic Position in IP
Negotiations
– Implied Threat in Cross-Licensing
• Assess Liability Risk
Literal Infringement
• Rule of Exactness
– Lay person’s infringement definition
• Rule of Addition
– Identity of elements w/ some addition
• Rule of Omission
– No infringement if claimed element missing
• Blocking Patents
– Original & improvement must cross-license
Infringement:
Equivalents
• Performs substantially identical
function in substantially identical
way, obtains same result
• Non-Literal Infringement
– Replacement w/ similar feature
– Skirts patent’s spirit
– Obvious changes