Defending your Rights


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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

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Defending your Rights

  1. 1. Defending your rights – invention decision Chen JingFung (Grace) 2012/05/31Chapter 7-8, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825
  2. 2. 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 & cise.ntut 2
  3. 3. The proceeding for Intellectual Property (IP) Protection• After making commercial evaluation & search, consider following alternatives – Advice: don’t give up you day jobphysical 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 coveragephysical protection Virtual protection physical protection 3 © 2012 & cise.ntut
  4. 4. The advantage for filing an application • Why file a patent application before offering the invention to a manufacturer inventor corporate Offer more so get moreOffensive rights for • most manufacturersyour 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 © 2012 & cise.ntut
  5. 5. 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: 5 © 2012 & cise.ntut
  6. 6. 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 Recordconception Submit your properly idea to 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 © 2012 & cise.ntut
  7. 7. 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 七喜(7.Up) 7 © 2012 & cise.ntut
  8. 8. 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 portedHistory about Blue licenses are expanding being portedcopyrights (US) Sky licenses ports planned 8Ref: copyright(wiki) © 2012 & cise.ntut
  9. 9. Discussion – trade secret• Keep it secret• Effect of “patent pending” notice• Disadvantage of keeping secret © 2012 & cise.ntut 9
  10. 10. 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) © 2012 & cise.ntut 10
  11. 11. 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 © 2012 & cise.ntut 11
  12. 12. 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 © 2012 & cise.ntut 12
  13. 13. 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 © 2012 & cise.ntut
  14. 14. 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 © 2012 & cise.ntut
  15. 15. 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 & Inventsth 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 © 2012 & cise.ntut
  16. 16. A PATENT APPLICATIONTO PTO © 2012 & cise.ntut 16
  17. 17. 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 © 2012 & cise.ntut
  18. 18. 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 © 2012 & cise.ntut 18
  19. 19. Patent application - electronic forms • PTO provides online patent forms over Internet via EFS-Web (Electronic Filing System)Form number Last updated introductionPTO-2038 2012/05 Credit Card payment form & instructions for filing feeSB05(PTO/SB/05) 2008/08 Utility patent application transmittal Fee transmittal (PTO/SB/17 removed “additional fees” becauseSB17(PTO/SB/17) 2011/09 other PTO forms already provide)SB17i(PTO/SB/17i) 2009/07 Processing Fee Under 37 CFR 1.17(i) TransmittalSB17p(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 underSB01A(PTO/SB/01A) 2009/01 penalty of perjury <- show you’re the true inventor Information Disclosure Statement, list of prior art cited bySB08* 2010/02 applicant & copies; the form will ask you the potentially affect novelty and nonobviousness Application data sheet (ADS) to provide the bibliographic dataSB14 EFS-WEB 2008/11 (inventors’ names, address ..) + PTO/SB/01A 19 © 2012 & cise.ntut
  20. 20. 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 © 2012 & cise.ntut
  21. 21. 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 embodiment3 subsections – The detailed description explains how the main(operation, embodiment of the invention works or operatesdescription, • Description for additional embodiment + Figs. Y-Zoperation…)can extend as – Describes the structure of an alternative embodimenta train • Operation for additional one – How to operate the alternative embodiment •… 21 © 2012 & cise.ntut
  22. 22. 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 © 2012 & cise.ntut
  23. 23. 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 © 2012 & cise.ntut
  24. 24. 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 © 2012 & cise.ntut 24
  25. 25. 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: – 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