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Polishing search skills


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Start to the procedure on classification search (patents)
Point out reading skill & how to define the scope of a patent
Use some case studies to illustrations
Design around lawsuits for Apple against Samsung
Development online DB approaches (cloud)
Finally, show other useful information (online search) such as official gazette, trademarks …

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Polishing search skills

  1. 1. Polishing Search Skillsvia Patents, Trademarks, Official Gazette online database Chen JingFung (Grace) 2012/05/24Chapter 6, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825USPTO – official gazette, patent & trademarks online search
  2. 2. Outline• Classification patent search flowchart• Reading skills for patent claims• The scope of patent coverage skills – Design Around case (ex. Apple vs. Samsung) – Scope definition differentiation – Case study (cloud provisioning & green data center)• Other patents & trademarks info – USPTO Official Gazette (OG) can offer more content © 2012 & cise.ntut 2
  3. 3. Classification Searching Process for patents Check selected classes & Use index to the Articulate essence of subclasses (or other USPTO/EPO classification invention to obtain key classes…) in Manual of to find suitable classes & descriptive words Classification & subclass Classification Definitions If relevant patents foundRecheck Index, Manual & Search in selected classes Study relevant patentsDefinitions using other & subclasses use the patentabilitykeywords to find other Note relevant patents (& flowchart (P. 32-34) toclasses & subclasses other references) self-examine invention If no relevant patents found © 2012 & cise.ntut 3
  4. 4. Note when you read the claims• Keep in mind 3 important considerations – Don’t claim it, if a prior-art shows/describes but doesn’t formally claim your invention – Claims just ≈ a summary or synopsis of the patent’s disclosure • More technical information in a patent – The scope of coverage in your invention • Will usually be narrower than the scope of the claims of the closely relevant prior-art patents © 2012 & cise.ntut 4
  5. 5. claims of prior patent vs. your invention Your invention• Common misconception Prior patent – If your invention is cover the claims of a prior patent = infringement ? If your invention is uncover the claims of a prior patent = you can free to claim it ?• Facts – Only the manufacture, use, sale, offer for sale, or importation of an invention in physical form can infringe – As previously stated, PTO has absolutely no concern about patent infringement © 2012 & cise.ntut 5
  6. 6. The scope of patent coverage - 1• Many inventions are complex to have some features, or combination of features – That will be enough to be patentable – get meaningful patent coverage – Offensive rights are broad enough that competitors can’t “design around” your patent easily • Design around: Patent lawsuit (2011 ~ ) Ref: 6 © 2012 & cise.ntut
  7. 7. Design Around lawsuit Case study: Apple vs. Samsung iPad2 Galaxy Tab10.1N• Düsseldorf Higher Regional Court (German court) (2012/1/31) – Apple’s iPad2 against Samsung’s Galaxy Tab 10.1 – Ruled a preliminary injunction against Galaxy Tab 10.1 • Samsung’s Galaxy tab 10.1N design-around passes muster with German court (away from “Apple’s claims”) – Be repositioned to the front & – the presence of a silver colored bezel Fig ref: + tested.comRef: FOSS patents (2012/1) 7 © 2012 & cise.ntut
  8. 8. Apple vs. Samsung can’t design-around -1• As Samsung failure to produce source code, US court (2012/5/4) suggested Samsung shall offer any evidence of its design-around efforts for the ‘381’, ‘891’ & ‘163’ patents US pat no. Apple Samsung 7469381 Products: Galaxy tab 10.1, Galaxy S 4G … rubber-banding effect Scroll back “blow glow” workaround with touch panel Might be to simple skillRef: FOSS patents (2012/5) 8 © 2012 & cise.ntut
  9. 9. Apple vs. Samsung can’t design-around -2 • Samsung’s against Apple with design-around strategies for the ‘381’, ‘891’ & ‘163’ patents US pat no. Apple Samsung 7853891 Timed window No offer the related products (samsung) source code 7864163 Tap to zoom & navigate US district court (2012/5/4) for the Northen district of california GRANT’s Apple’s motionRef: order granting Apple’s motion-Docket no. 795 © 2012 & cise.ntut 9
  10. 10. Apple: US7469381 over scrolling with a touch panel• Title: list scrolling & document translation, scaling, & rotation on a touch-screen display – Use a “Over-scroll bounce” skill• Technical field – The disclosed embodiments relate generally to devices with touch-screen displays, and more particularly to scrolling lists and to translating, rotating, and scaling electronic documents on devices with touch-screen displays. – Focus on scrolling design © 2012 & cise.ntut 10
  11. 11. Apple: US7853891timed window• Title: method & apparatus for displaying a window for a user interface• Field of invention – … relates to graphical user interfaces … such interfaces with window No translucency Summary: A degree of translucency & position of the first window is adjustable by a timer © 2012 & cise.ntut 11
  12. 12. Apple: US7864163 Tap to zoom & navigate• Title: portable electronic device, method, and graphical user interface for displaying structured electronic documents• Technical field – relate generally to portable electronic devices … display structured electronic documents such as web pages on a touch screen display Zoom navigate Gesture can determine which one should be zooming or navigating 12 © 2012 & cise.ntut
  13. 13. The scope of patent coverage - 2• “design around” a patent strategy can make a competitive device or process – That is equivalent in function but doesn’t infringe• Many “modern” inventions are actually old hat – Try to define your scope 1956 power IBM650 Card reader Minimum configuration:1888 design: Colossus Gigabit Bandwidth~ $100/machinewould use 1800 valves Gigabit LAN ~ $40/machine Central switch ~ $1600/24-port 13 © 2012 & cise.ntut
  14. 14. Scope definition differentiation example 1 - Standalone -> Cloud ProvisioningWeb Chrome App App Android OS Storage OS StorageApp Virtualization (VMM) Layer Windows Linux e.g. VMware, MS, Sun …DBEmail Hardware Hardware platform platform A server’s Virtual Server Concept Cloud Computing A server resource can be Encapsulate the server Provisioning/ runs a shared to software de-coupling from the Rent service & function multi-OSs hardware charge by Time 14 © 2012 & cise.ntut
  15. 15. Scope definition differentiation example 2 - Green Data Center (DC) Open DC Private DC Intel as technical advisor Open DC offers application SW -> HW -> standardization • Facebook unveiled (2011/4) • 300+ members major “Open DC” design/solution from Telecom, financial,Google’s DC is 3 in Asian • FB proposed self design digital content & auto spec. as a draft industry in which(HK, Singapore & Taiwan), represent over $100B in • Develop a low cost &6 in US & 2 in Europe annual IT spending energy efficient — Server: low cost • For cloud deployment: compute nodes Secure Federation, — Storage: low cost Automation, Common block storage Management & Policy, — DC: energy efficient and Transparency Ref: IDC 2012 15 © 2012 & cise.ntut
  16. 16. Official Gazette(OG) - News & Notices• OG is the official journal of the USPTO – Contain important information and change in rules concerning both patents & trademarks in electronic version – Published weekly on Tuesday including • Bibliographic information and • A representative drawing for • each patent granted or trademark published on that issue date – OG online search <- can find the history about notices & rules changes • Search OG DB from 1995 - > present • Older search OG consolidated listing (1964 – 1998) Ref: USPTO Official Gazette (OG) © 2012 & cise.ntut 16
  17. 17. Official Gazette for Patent – published conent• OG for patents (eOG:P) is available online for the most recent 52 issues items Published content Expired patents 1. due to failure to pay required maintenance fees; 2. after expiration, that patent no. are published ~ 3 months Patents reinstated Due to the acceptance of a late maintenance fee Reissue applications Patents filed as reissues Reexaminations Patents requested to be reexamined Certificates of Patents granted certificates to correct previously published Correction material summary Summaries of final decisions issued by the Trademark Trial and Appeal BoardRef: USPTO Official Gazette (OG) © 2012 & cise.ntut 17
  18. 18. Official Gazette for Patent - other info• OG for patents (eOG:P): publish in following issue – USPTO patent full text database (patft DB) • Can search by patentee name, keyword, current classification, or patent number items content Errata Correct info about previously published material Service by Note the cancel trademark registration within 30 days, pending Publication appearance of a registrant, assignee, or legal representative Registration to Names of individuals who have received provisional Practice recognition to prepare and prosecute patent applications 1. the public regarding changes Notices from the 2. updates in Patent rules and regulations and/or other Solicitors Office patent-related items Reclassification Lists newly established, deleted, or reclassified classes & Reports subclasses, revised every 3 months. Ref: USPTO Official Gazette (OG) © 2012 & cise.ntut 18
  19. 19. Official Gazette for Patent - news & notices• Published issues – Date: • May 22, 2012 – Week • 21 – Number: • 1378-4• Example – Class = 450 – Subclass = 30 19 © 2012 & cise.ntut
  20. 20. Official Gazette (OG) for Trademarks• OG for Trademarks is published each Tuesday, and contains – bibliographic information & a representative drawing for each mark published, along with a list of cancelled and renewed registrations. – Have a electronic form (.PDF format) for the most recent fifty-two (52) issues • Marks can be application in more than one class – A separate fee ($300) in each class • Ex. Week #21 – 22 May 2012 Trademark Official Gazette (including international classification), Registration certificates & updated registration certificates © 2012 & cise.ntut 20
  21. 21. Trademark Official Gazette(OG) search database• Information about each mark may also be found in the searchable trademark database – updated daily and accessible directly from the home page of the USPTO Web site – Database (local + online trademark search): • Patent & Trademark Resource Centers (PTRCs): PTRC locations by State (A – L, M – N, O – W) • TESS (Trademark Electronic Search System) contains – the records of active & inactive trademark registrations + applications, – some from the USPTOs examination of your application to be grounds for refusing to register your mark, » i.e., if the examining attorney determines that a "likelihood of confusion" exists © 2012 & cise.ntut 21
  22. 22. Trademark – likelihood of Confuse• Likelihood of Confusion is related to Similarity of Marks <- hard to examineSound Appearance Commercial impression 22 © 2012 & cise.ntut
  23. 23. Trademark – Relatedness of Goods and/or Services• Relatedness btw goods and/or services are related in a manner <- Consumers are likely to assume (mistakenly) that they come from a common source Goods Services Goods & Services 23 © 2012 & cise.ntut
  24. 24. Trademark – search system (TESS) 24© 2012 & cise.ntut
  25. 25. 85025881 F&E© 2012 & cise.ntut 25
  26. 26. Check trademark-“f&e” applicant’s addressRef: business case © 2012 & cise.ntut 26
  27. 27. Summary• Start to the procedure on classification search (patents)• Point out reading skill & how to define the scope of a patent – Use some case studies to illustrations • Design around lawsuits for Apple against Samsung • Development online DB approaches (cloud)• Finally, show other useful information (online search) such as official gazette, trademarks … © 2012 & cise.ntut 27
  28. 28. Reference• David Pressman, chapter 6, “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 & gain your skill, Inquiry for patent search)• Blog: – Introduce hybrid TV/Smart TV (hbbTV) including widget design, Android technology (API), system, ecosystem, framework, service, application…, – Agile for progressing: • About how to teamwork – Some programming info. as Apache wookie, refactoring tech, CE- HTML, a solution about removing a backdoor “Trojan” & surveillance paper 28 © 2012 & cise.ntut