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

© 2012 Grace@iii.org.tw & cise.ntut 2

The proceeding for
Intellectual Property (IP) Protection
• After making commercial evaluation & search,
consider following alternatives
– Advice: don’t give up you day job
physical protection Virtual protection

Test the market for
Keep it a trade
File a PPA up to a year and
secret
then consider RPA

Use distinctive
Use a clever
“trade dress” for File a design patent
trademark &
unfair competition application
copyright coverage
coverage
physical protection Virtual protection physical protection
3
© 2012 Grace@iii.org.tw & cise.ntut

The advantage for filing an application
• Why file a patent application before offering
the invention to a manufacturer

inventor
corporate Offer more so get more
Offensive rights for • most manufacturers
your invention want a proprietary or
Have rights even if you
• your invention will sign a Waiver privileged position
be defined in (commercial advantage)
precise terms w/ • Your powerful rights • They may to buy your
formal drawing & be Respect for your against underhanded invention with its coving
established your invention dealing by the patent application
claim in PTO • After showing your manufacturer
application, a
manufacturer will
think you’re a
serious player
4

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

reverse
engineering

Fig ref: klnce.edu
5

Other protection methods if non-
patentability
Commercial potential $$ Charge submitters
idea = $10
Pay royalties on
<- Close prior art but the sales
Non-Patentability
not a dead ringer
Record
conception Submit your
properly idea to
Quirky.com
Provide a clever trademark
Ex. registered mark® Consider Trade
& unregistered mark(TM, SM) secret

TM for goods Provide Provide
SM for services Obtain a distinctive copyrightable
design labeling
”Trade Dress”
patent

6

Trademark vs. Trade dress
Trademark Trade dress
Definition A brand name for A product’s physical appearance, including
product its size, shape, color, design, & texture
Online search TIPO - trademark reference database
tool
USPTO – TESS (Trademark Electronic Search System)

SOL
Disclaimer: “HELMET”

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

七喜(7.Up)
http://www.7up.com/

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

Copyrightable labeling

definition A legal concept by most governments, A non-profit organization which aim to
giving exclusive rights on the creator of protect the range of creative works
an original work (i.e. “the right to copy”) available
coverage Exclusive rights Six major licenses of CC
• Produce copies or reproductions & • Attribution (CC BY)
sell those copies (including typically, • Attribution share Alike(CC BY-SA)
electronic copies) • Attribution No Derivatives (CC BY-ND)
• Import or export the work • Attribution Non-Commercial(CC BY-NC)
• Create derivative works • Attribution Non-Commercial Share
• Perform or display the work publicly Alike (CC BY-NC-SA)
• Sell or assign these rights to others • Attribution Non-Commercial No
• Transmit or display by radio or video Derivatives (CC BY-NC-ND)
Arduino (CC BY-SA); Wikipedia (CC BY-SA)

Green licenses
have been ported
History about Blue licenses are
expanding being ported
copyrights (US) Sky licenses ports
planned
8
Ref: copyright(wiki) © 2012 Grace@iii.org.tw & cise.ntut

Discussion – trade secret

• Keep it secret

• Effect of “patent pending” notice

• Disadvantage of keeping secret


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)
Filing patent Anyone copied it
application (RPA) Issued Patents

Published
Applications
Ask back money

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

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


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

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
issuance of
a valid
patent

– Anyone (Pirate) sees your product may copy it
and file a fraudulent patent application on it
13

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)
14

Invention decision flowchart
Record conception
Invent something => Build & test it
or filing PPA
Is invention discoverable
Commercial potential (?) final product

Significant market Keep details
Patentable(?) Filing before
novelty secret for
manufacturing
20 years
Prepare a patent
Good trademark, application Prepare a Manufacture
trade dress,
patent & market
copyright-labeling
Manufacture & application successful?
distribute it
Invent Manufacture &
Invent
sth else distribute yourself
Prepare a patent sth else
application
Manufacture Keep as
Try to Patent File a patent
& distribute Try to sell invention & trade
sell it pending application
yourself patent application to secret w/ 1 yr
Without utility application manufacturer
Manufacture & distribute it 15

A PATENT APPLICATION
TO PTO


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
Not indicate any field of the You don’t know
invention Your invention doesn’t
Not mention any problems with solve
the prior art
17

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


Patent application - electronic forms
• PTO provides online patent forms over Internet
via EFS-Web (Electronic Filing System)
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
Fee transmittal (PTO/SB/17 removed “additional fees” because
SB17(PTO/SB/17) 2011/09
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
Nonpublication Request(NPO) under 35 U.S.C. 122(b)(2)(B)(i)
SB35(PTO/SB/35) 2009/07
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
SB01A(PTO/SB/01A) 2009/01 penalty of perjury <- show you’re the true inventor
Information Disclosure Statement, list of prior art cited by
SB08* 2010/02 applicant & copies; the form will ask you the potentially affect
novelty and nonobviousness
Application data sheet (ADS) to provide the bibliographic data
SB14 EFS-WEB 2008/11
(inventors’ names, address ..) + PTO/SB/01A
19

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) 20

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
3 subsections – The detailed description explains how the main
(operation, embodiment of the invention works or operates
description, • Description for additional embodiment + Figs. Y-Z
operation…)
can extend as – Describes the structure of an alternative embodiment
a train • Operation for additional one
– How to operate the alternative embodiment
•…
21

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
22

After PTO received your application
3
Amendment

Your 1 E-file PTO run a first
Examiners
application Traditional exam for doc.
postal
2
• 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
23

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


Reference
• 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
25

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