Tips for fulfilling patent application

Tips for fulfilling patent
application
Initial
draws
Draft the
spec.

Chen JingFung (Grace)
@csie.ntut.edu.tw
2012/06/07
Chapter 8, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825
1
© 2012 Grace@iii.org.tw & cise.ntut

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 Grace@iii.org.tw & cise.ntut 2

1930 Radio +
automobile (1st time) Radio

1952 FM
met
Car
– 82-year
1964 Cassette evolution
– In-car
connectivity
1985 CD player
&
infotainment
systems on
vehicle today
2001 Satellite

2007 “Sync” user’s
Smartphone
ref: CBS 2012
2012 app integrates
smartphone, store media & 3
more content with radio2012 Grace@iii.org.tw & cise.ntut
©

Pandora Media –
Internet radio service

Car
dashboard

Win BlackBerry WebOS
Apple Android phones
mobile platform
Mobile
phone

Palm

Stand-alone 2012
players

4
Ref: pandora media

Apply more related inventions
Fees +
Filing application effort postpone

Grant of patent Expire 20 years

Your 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

“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


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

Trademark note - process
Work mark MUSIC GENOME PROJECT SPOTIFY PLAY EVERYWHERE
Goods & • Streaming of music of • … for use in the delivery, distribution and transmission of
Service 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 network
Serial No. 75980916 85603484
Filing date January 14, 2000 April 20, 2012
Owner (REGISTRANT) Kraft, Jon (APPLICANT) Spotify AB CORPORATION SWEDEN
INDIVIDUAL
(LAST LISTED OWNER)
PANDORA MEDIA, INC.
Ref: Spotify Apps API 8

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

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

Software note - key for fulfilling (1
be 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

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 Grace@iii.org.tw & cise.ntut Ref: flstudio-tutorials.com

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 Grace@iii.org.tw & cise.ntut biotech sequence lists

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

Example: adequately detailed flowcharts
US5170279 .. calibrating and improving
linearity of system for …
<- application type: Utility

Specific

General
15

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., 1's and 0's) or
• an intermediate language such as RTL Ref: wiki
16

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

• 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

• 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

• 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

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

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

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


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


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: 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

APPENDIX


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

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