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Working model to patentability


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Discuss about Secret invention -> patentability
The principle secret -> build working models -> introduce how to review patentability -> Including 4 legal requirements -> statutory class (focus on class 1: process)

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Working model to patentability

  1. 1. Working Model to Patentability -> Statutory Class Chen JingFung (Grace) 2012/03/15Chapter 4 & 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825
  2. 2. Outline• Secret for intangible idea -> tangible assets• Working Model to realize substance – Work invention by yourself – Implement your idea via others (Ex. Consultants) • How to avoid “disputes”• Patentability – Introduce legal requirements Grace@cise.ntut 2
  3. 3. keep secret when ask• Some good alternatives that can protect your invention – Mark before advice • Top of logbook entry labeled that “… understand xxx’s confidential” + date – xxx: name of invention • Add a “Comments” column to indicate that you value their opinion – Ask them to sign + date as witnesses – Get your consultants to sign the “Nondisclosure Agreement” <- Serious!! Grace@cise.ntut 3
  4. 4. Lock for nice guy or theft vs. – Email (inferior to the other devices) • Ex. Send a confirming or thank-you letter (before/after) – No matter how to prevent loss of trade secret (your invention), don’t go overboard • Positive thinking – Most stolen inventions mean they have business value • “Let them steal it – they don’t know how much work they’re in for” – Said by the highly successful inventor Paul Brown Grace@cise.ntut 4
  5. 5. Working Model -Fig ref: Show your ambition • Build & test a working model (prototype) for your invention – Engage someone who will do it for you for a fee ($$) – Working model can show your marketing consultants, plus valuable info about • Operability, cost, technical problems & other factors (+/-) • Build a “virtual prototype” (computer simulation) Grace@cise.ntut 5
  6. 6. Working Model (WM) – training environment (Arduino)• Arduino (hackspace@wiki; XinCheJian@china) is an open-source electronics prototyping platform based on easy-to-use hardware & software – Receiving input from a variety of sensors • Controlling lights, motors & other actuator – Microcontroller on the board is programmed using • programming language – based on Wiring • Development environment – Based in Processing – Can be stand-alone/ communicating with software running Fig ref: video: history of Arduino 2010 • E.g. flash, processing, MaxMSP Grace@cise.ntut 6
  7. 7. Use a Model Maker• Hire 1 ~ more model makers for a fee/ for a percentage of the action – Can’t build & test it (WM) yourself – Use Model makers as engineers, technicians, & teachers  – Where can find makers? • There may be a workshop (seminar) in your area – Will supply you with tools, space & assistance for a fee Grace@cise.ntut 7
  8. 8. Workshop – Exhibition place• San Francisco area hosts Fig ref: “Techshop” – A 15,000 foot2 membership- based zone – Provide members with access to tools, equipment, instruction, & support community – Support people build the things which they wants – Open in 5 location in US (+ in planning: 3): • Opening: Menlo Park, Raleigh, San Francisco, San Jose, Detroit • In planning: Portland, Brooklyn, Los Angeles Grace@cise.ntut 8
  9. 9. Agree ment • Recital: – certain skills to develop project completely • Mediation & Arbitration – Shall negotiate in good faith … 9Grace@cise.ntut Ref: Form4 – 3, Patent It Yourself , 2011, P.503-504
  10. 10. Detail description for Done: wire-frame model• Wire frame model – A visual presentation of 3D/physical object • Composing by vertices + straight lines or curves – Programming tools Fig ref: wiki • DNC machine tools, CAM, 3D CAD (surface & solid), CNC – Application • Animation, CGI, 3D CG, Polygon mesh, vector graphics… • Mockup (design new product) – Automotive devices, systems engineering, military acquisition (F-35 lightning II), consumer goods, furniture & cabinetry, software engineering… Fig ref: 10 Grace@cise.ntut
  11. 11. Detail description for Done: plastic-covered • Plastic-covered can make many types things – Advantage: Fig ref: III-SNSI R&D 100: In-Snergy • useful in the building and construction, electronics, packaging (gladwrap), transportation industries • Plastic is good, light, strong and cheap to produce – Drawback • is indestructibleRef: Fig ref: Fig ref: iii 11 Grace@cise.ntut
  12. 12. Trade rule• Manner of payment – Usually 1/3 at start, 1/3 upon construction & 1/3 on acceptance by you – Or pick the state where you reside if the consultant is out- of-state• Break the law @ USA – The Agreement requires the Consult to perform in a timely manner – Void the Agreement & pay only 50% – Have the Consultant pay an agreed-upon penalty for every day – Agreement contains a self-explanatory provision • Regarding the Consultant’s prior invention Grace@cise.ntut 12
  13. 13. Handle people problemwith Outsourcing• Naturally brings up the issue during hiring consultants to build, test or develop – Consultants often come up with patentable improvement, ramifications … – Consultant’s work should follow under the Agreement – Involve disputes as possible in Agreement • Who will own (?) & be able to use the consultant’s invention (?) – Prevent many misunderstandings, argument, and event lawsuits later on • The consultant won’t be able to claim that a valuable invention – Because it was made on the Consultant’s time • Apply patents in joint names – If the invention is closely related to / improves on yours Grace@cise.ntut 13
  14. 14. Patentability (?) • 4 legal requirements for Unobvious? getting a utility patent (35USC 103) – Statutory Class by patent law – Utility as a useful one – Novelty Novelty? • A new physical feature (?) (35 USC 102) • A new combination of separate old feature (?) • A new use of an old feature (?) Useful? (35 USC 101) – Unobvious • Can provide one or more new and unexpected results (?)a statutory class ? (35 USC 101) • A skill can make of innovation in Process (method), machine, the specific technology manufacture, composition, – How to measure “design patent” new use? by a feeling (ornamental or aesthetic sense) (?) 14 Grace@cise.ntut
  15. 15. PTO judge’s criteria for 4 legal requirements • The last one “Unobvious” is Unobvious relatively high – First 3 tests (Statutory class, Novelty Utility + Novelty) is short steps – PTO review procedure Utility • Fit within at least one statutory class (?), Have utility (?), Posses novelty (?) Statutory class • Unobvious (?) <- reject by – Most of patent application fail to this (almost ½ patent applications) Grace@cise.ntut 15
  16. 16. Requirement #1: the statutory classes• PTO must consider your invention “within a statutory class or category” – 5 classes: process (method), machine, manufacture, composition, new use – Most invention can squeeze into at least one of them • Overlap to some extent • You don’t have to specify the one to apply – carefully “nonstatutory subject matter” • PTO may reject it under MPEP Section 101 • you should be sure it does not fall into one of the exceptions below… Patent Laws - PTO publishes its Manual of Patent Examining Procedure (MPEP) 16 Fig ref: Patent It Yourself, 2011 Grace@cise.ntut
  17. 17. Statutory Class [SC] (1) – Processes including Software• Nonstatutory (in past) -> statutory case – Show a useful result can earn a patent • US4597578(1986) title: Golf club grip useful result No. 1 Tseng wins LPGA Thailand 2012 Grace@cise.ntut 17
  18. 18. Statutory Class [SC] (2) – Conventional Process• Conventional process are heat treatments, chemical reactions or chemicals – Show better performance than before • PTO has been granted a patent (US7470439, 2008) about feeding chickens a special diet that results in better eggs, and analyzing those performance. Live weight Egg production Grace@cise.ntut 18
  19. 19. Statutory Class [SC] (3) –exception for conventional process• A patent lawsuit talk on treatment procedure – Describe a process of attaching a hairpiece to a bald person’s scalp by putting suture anchors in the scalp and sewing the piece to the suture anchors – Surgical operations can be patented• However, the law exempts medical practitioners from infringing any patent on a medical procedure Grace@cise.ntut 19
  20. 20. Statutory Class [SC] (4) – introduce software process• Most software-related invention are claimed as process – Also software inventions can also be claimed as machines• Algorithms cannot be patented without involving hardware <- “abstract idea” – An algorithm is a step-by-step problem-solving procedure case result Software/algorithm affects some Falls within a SC as a machine/process Hardware/process Software/algorithm merely manipulates PTO will not consider it within SC numbers or solves an algorithm Grace@cise.ntut 20
  21. 21. Statutory Class [SC] (5) – introduce software process• Software patentability case – analyzes EKG, spectrographic, seismic, or data bit signals, controls a milling machine, creates useful images on a PC screen, the printing formats (math formulae), recognizes patterns or voices, or selects stocks that will beat an index• Software non-patentability case – Number of crunches, non-useful curve, calculates distances without any hardware involved … Grace@cise.ntut 21
  22. 22. Statutory Class [SC] (6) – software process (algorithm)• Successful case on algorithm – Statutory subject matter (SSM) • The main patent court determined an algorithm for making a smoother diagonal line on a monitor as it look well In re Alappat, 33 F.3d 1526 (CAFC 1994) • A general-purpose computer data structure that organizes information into different categories within infinite number In re Lowry, 32 F.3d (CAFC 1994) – Human can control the selection – Key-point: hardware must be substantially involved Grace@cise.ntut 22
  23. 23. Statutory Class [SC] (7) –Internet & business method patents• Business method is also difficult to patent as software patent – Because they both involve math, formula or algorithmUS5193056, 1993, Data processing system for hub andspoke financial services configuration Calculating “data relationship” about portfolio (Hub) with many different mutual funds (Spokes) State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), cert. denied 119 S.Ct. 851 (1999) Grace@cise.ntut 23
  24. 24. Summary• Discuss about Secret invention -> patentability – The principle secret -> – build working models -> – introduce how to review patentability • Including 4 legal requirements – statutory class (focus on process), utility, novelty, unobvious Grace@cise.ntut 24
  25. 25. HW• Try find some news about your invention – Write down to contribute it for team & yourself • (1) Related the best one in your team • (2) Related your invention Grace@cise.ntut 25
  26. 26. Reference• David Pressman, chapter 4 &5, “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• Analysis “State Street Bank & Trust Co. v. Signature Financial Group, Inc.”, 149 F.3d 1368 (Fed. Cir. 1998), – Lang CN: – Lang EN: p• Blog: – Introduce hybrid 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 grace@csie.ntut 26