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Tips for fulfilling patent application


How to separate the related inventions or combine those in one …

How to separate the related inventions or combine those in one
case study: radio met car
Filing application tips - "KISS rule“
Trademark note
Software & biz methods notes including source code & flowchart
First sketches skills (Official Gazette, OG)
Drafting the specification hints

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  • 1. Tips for fulfilling patent application Initial draws Draft the spec. Chen JingFung (Grace) 2012/06/07Chapter 8, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825 1 © 2012 & cise.ntut
  • 2. Outline• How to separate the related inventions or combine those in one – case study: radio met car• Filing application tips - "KISS rule“ – Trademark note – Software & biz methods notes including source code & flowchart – First sketches skills (Official Gazette, OG) – Drafting the specification hints © 2012 & cise.ntut 2
  • 3. 1930 Radio +automobile (1st time) Radio1952 FM met Car – 82-year1964 Cassette evolution – In-car connectivity1985 CD player & infotainment systems on vehicle today2001 Satellite2007 “Sync” user’sSmartphone ref: CBS 20122012 app integratessmartphone, store media & 3more content with radio2012 & cise.ntut ©
  • 4. Pandora Media – Internet radio service Cardashboard Win BlackBerry WebOS Apple Android phones mobile platform Mobile phone PalmStand-alone 2012 players 4 Ref: pandora media © 2012 & cise.ntut
  • 5. Apply more related inventions Fees + Filing application effort postpone Grant of patent Expire 20 yearsYour invention Show describe Y This divisional application can & claim in same application delay 2nd filing fee by 1~2 yr N Examiner Restrict your application to one File a divisional application … 5 Ref: wall street journal 2012 © 2012 & cise.ntut
  • 6. “KISS” rule (Keep It Simple, Stupid!)• Misconception – Should not include details of the invention since this will limit the invention (?)• Fact – The scope of the invention is determined mainly by the claims => as detail in the specification as you can – “you must get it right the first time” • Put insufficient info <- your application can be rejected under Section 112 on the grounds of “incomplete disclosure” • Otherwise, you should have a convincing skill © 2012 & cise.ntut 6
  • 7. Trademark Note - Chemical• If your invention uses a trademarked chemical – such as “Ajax developer” <- you don’t know its composition – general speaking, AJAX = Asynchronous JavaScript & XML is used to exchange data with a server & update parts of a web page without reloading • Find other similar chemicals will work • Refer to the chemical by its generic name with a reference to a suitable manufacturer – Drawback: this can limit your invention • Ex. Ajax Chemical Company • Another example, a inventor found the composition => a Poison Control Center hotline 7 © 2012 & cise.ntut
  • 8. Trademark note - processWork mark MUSIC GENOME PROJECT SPOTIFY PLAY EVERYWHEREGoods & • Streaming of music of • … for use in the delivery, distribution and transmission ofService others over a global digital music … multimedia content; …for enabling computer network transmission, storage, sharing, collection, editing, • Providing music reviews organizing and modifying audio, … other data for use in and information in the field social networking, online chats and interactive of music over a global gaming, … ; …for creating searchable databases … for computer network peer-to-peer social networking databases; pre-recorded • Profiling musical tastes CDs featuring music; …streaming or downloading music, based on consumer film, TV-programs, audio books and games selection of music clips • Advertising and marketing services played over a global • Electronic transmission and streaming of digital media computer network, and content for others via global and local computer networks recommending other music • Entertainment, namely, providing streamed or to consumers based on downloadable music, film, tv-programs, audio books and such selections games to users online via a communication networkSerial No. 75980916 85603484Filing date January 14, 2000 April 20, 2012Owner (REGISTRANT) Kraft, Jon (APPLICANT) Spotify AB CORPORATION SWEDEN INDIVIDUAL (LAST LISTED OWNER) PANDORA MEDIA, INC. Ref: Spotify Apps API 8 © 2012 & cise.ntut
  • 9. Software, Computer-Related Inventions, and Business Methods• The main consideration applicable to any inventions is in meeting the full disclosure requirement – Contain a sufficiently detailed description of the invention – make absolutely sure it contains a • “full, clear, concise, and exact” description of the invention and • how to make and use it • The explanation should detail – how to configure the computer to perform the required function and interrelate – with any other elements to yield the claimed inventions 9 © 2012 & cise.ntut
  • 10. Software note for filing application• If your invention includes a microprocessor and an application program for it, – either in software or in firmware • Should include a source or object code (or pseudo code) listing with your application – use your chart to write the program & debug it without undue effort or significant creativity » even if the task would take several months <- a pseudo code for General Search Algorithm • or detailed flowchart of the operations & steps © 2012 & cise.ntut 10
  • 11. Software note - key for fulfilling (1be hardware based after Bilski v. Kappos• A general-purpose computer software – The process may run in a PROM (programmed read-only memory) or a separate program on a disk – Should explain in the specification • how to implement the listing & • any special instructions <- necessary without undue experimentation • Should detail how to configure the computer <- Goal: to yield the claimed invention – perform the required function & – interrelate with any other elements 11 © 2012 & cise.ntut
  • 12. Software note - key for fulfilling (2 link with hardware – What programming language the listing is in • Ex. “C++” how to use it to control the computer/microprocessor – What type of computer/ microprocessor to use it with (e.g. “a Pentium chip”) – What hardware should be connected to the computer, both on the input & output sides as necessary • Ex. MIDI interface & a projector touch UI US 2010/0188428 A1 Mobile terminal with image projection 12© 2012 & cise.ntut Ref:
  • 13. Software note - key for fulfilling (3 who test your code?• Provide the necessary disclosure is to supply the listing as part of the patent application – Be submitted in ASCII format per PTO Rule 52(e) (37 CFR 1.52(e))• The program should be free of – any serious bugs & not have many minor bugs – Let no one argue your listing wouldn’t function according to its specifications • (PTO won’t test your program but your adversary will!!) Program size (72 characters/line) Send to PTO More than 60 lines The end of specification 300 lines or less On drawing sheets/ in the specification More than 300 lines CD-ROM [PTO Rule 52(e)], EFS-web (PDF is available) File program listings & 13 © 2012 & cise.ntut biotech sequence lists
  • 14. Software note - key for fulfilling (4 only flowcharts• Make sure flowchart’s complete & detailed enough <- A flowchart like the plans for a building – Let a programmer can write a program by using your routine skills – Even if it will take a builder several months (or months, years or more) – If the plans are rough, should hire an architect to complete them (use a lot of imagination) • Then they’re inadequate• Explanation - flowchart – Discuss each block detail, list the equations referred to, explain exactly how to implement the flowchart 14 © 2012 & cise.ntut
  • 15. Example: adequately detailed flowchartsUS5170279 .. calibrating and improvinglinearity of system for …<- application type: Utility Specific General 15 © 2012 & cise.ntut
  • 16. Software note - key for fulfilling (5 SC + flowchart• a copyright notice (© , (cc) or copyleft ) in the patent application – Reader can copy your application & using your program – Copyleft licenses (for software) for reproducing & modifying the work • source code files will contain a copy of the license terms & acknowledge the author(s)• If you afraid pirates to copy your source code (SC) – so it’s best not to include source code, if at all possible. – provide just the object code (machine code) or a detailed flowchart. Object code is a sequence of statements or instructions in a computer language, • usually a machine code language (i.e., 1s and 0s) or • an intermediate language such as RTL Ref: wiki 16 © 2012 & cise.ntut
  • 17. First Sketches & Name Parts (1• Only consider a set of sketches showing all of the aspects of your invention – without worrying about size or arrangement – Later on we can be reduced and compiled them• After completed your sketches, write down a name for each part adjacent to such part in each sketch, – such as “handlebar,” “handgrip,” “clamp,” “bolt,” etc. – If difficultly naming any part, should refer to • The Glossary of useful terms (Patent It Yourself, 2011 - Appendix 3) • Your prior-art patents or • A visual dictionary such as – The Firefly Visual Dictionary by Corbeil and Archambault (Firefly Books, 2002) or the Visual Dictionary of Science (DK Publishing, 1998). 17 © 2012 & cise.ntut
  • 18. First Sketches & Name Parts (2• Drawing should be done in US3751963 Contact crimping tool separate, unconnected figures, each one labeled – Ex. “Fig. 1,” “Fig. 2,” … – possible different views and embodiments of your invention• If 2 figures are related, make them with the same prefix name – Ex. “Fig. 1A,” “Fig. 1B,” etc., or “Fig. 1,” “Fig. 1’,” etc. – Use as many views as necessary – Get an idea (from prior art) as to how to it’s done Isometric View with hidden lines 18 © 2012 & cise.ntut
  • 19. First Sketches & Name Parts (3• Use reasonable symbols for mechanical, electronic/electrical, & chemical parts – Suggest use conventional symbols such as ANSI – An electronic system, a block diagram with each block labeled • “Schmitt Trigger”, “flip-flop”, “inverter”… • If block represents a non-conventional circuit – Explain clearly what’s in the block/ provide a reference to a suitable publication • If any block represents a programmed microprocessor – Provide a listing of program / software flowchart • Select one figure of your drawing (comprehensive enough) to be included in the Official Gazette (OG) – After grant patent, PTO will publish it • If your invention is related to prior-art – illustrate the prior-art device in the first figure <- you explain it & its drawback 19 © 2012 & cise.ntut
  • 20. First Sketches & Name Parts (4• Machine Sketches • Chemical composition – Contain enough views to sketches show every feature of the – Has a non-homogeneous invention composition (internally differentiated through layering) – Should show it in cross- section detail – If involve a step-by-step process <- PTO will require flowchart • Let examiners, judges, searchers understand your patent more rapidly 20 © 2012 & cise.ntut
  • 21. Tips for Drafting the Specification (1• After reduced those sketches, try to draft the specification with separate sections, each with a heading• Drafting Tips – Avoid Legalese (“patent Profanity”) <- a layperson don’t know “the correct legal terms to use.” • Will make your writing stilted, less clear, and harder to understand • only legal requirements for “The claims” should be written with extreme clarity and precision, and – have to use a few “saids” and “wherebys” • Legal terminology was created by lawyers to make their writing less understandable Key: clarify your subject 21 © 2012 & cise.ntut
  • 22. Tips for Drafting the Specification (2• Use short & simple sentences – Description in short, simple sentences with short paragraphs • Each paragraph < 200~250 words/ one page (double- spaced • Should relate to one part or subpart of your invention • A sentence may < 13 words – ref: Cybernetics Institute found 50% audits ability • Don’t worry the beauty of language – Goal: include all points of substance of your invention & make your description clear• Avoid grammar & spelling error 22 © 2012 & cise.ntut
  • 23. Summary• Start form the trends of radio + car – Introduce Pandora Media lnc. – Internet radio service to tell how to PTO’s response on applying a big patent (among more than one domain)• Then, share some tips on fulfilling a application including – Trademark note, software & biz methods notes (SW+HW, source code & flowchart), first sketches skills (Official Gazette), drafting the specification hints © 2012 & cise.ntut 23
  • 24. Final oral report• Total: 12-15 pages – Each item may include more than one page – Format • Title • Outline: oral flow • Prior-art (related reports, patents, papers…) • Description & operations (flowchart + explains) • Comparison table: show advantages • Members’ contribution table • Summary © 2012 & cise.ntut 24
  • 25. Reference• David Pressman, chapter 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) • Defend your Rights• Blog: – Introduce hybrid TV/Smart TV (hbbTV) including • widget, Android(API), system, ecosystem, framework, service, application… – Agile for progressing: • 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 © 2012 & cise.ntut
  • 26. APPENDIX © 2012 & cise.ntut 26
  • 27. USPTO - Transaction History• App no. 12/357,752 US 2010/0188428 A1, Mobile terminal with image projection – Assignee: LG – Application type: Utility – Status: Non Final Action Mailed • Date: 05-21-2012 – Filing date: 01-22-2009 – Class/ Subclass: 345/661 27 © 2012 & cise.ntut