Patenting Wireless Technology Week 2

Dr. Tal Lavian

http://cs.berkeley.edu/~tlaviantlavian@cs.berkeley.edu

UC Berkeley Engineering, CET

Continue from Last week

Internet 27 Assembly Line 1 Laptop 1

telephone 21 Battery 1 Mac / Windows OS 1

Airplane 17 Bicycle 1 MAGNIFYING GLASSES 1

Computer 13 Birth Control 1 Man-made satellites 1

WHEEL 12 Boats and Ships 1 Mass production of medicines 1

Automobile 12 Car 1 Medicine/Surgery 1

Engine 12 Cement 1 Microscale 3D Printing 1

Lightbulb 11 CHOCOLATE 1 Microwave Oven 1

Refrigerator 11 Clock 1 Mobile Devices 1

Printing Press 11 Cloud 1 Modular machinery/ Assembly line 1

Electricity 10 Compound Microscope 1 MRIs, CT Scans, & X-rays technologies in Medicine 1

Camera 7 Compressed Pills 1 Music 1

Agriculture 6 Contact lens with blood sugar level tracker 1 NAIL 1

Compass 6 Contraception 1 Navigation Bracelet for the Blind 1

Television 4 Control of Fire 1 Nuclear Fission 1

iPhone 3 De-emulsifying Agents 1 Optical Lenses 1

Paper 3 Defibrillator 1 Photography 1

Penicillin 3 Domestication 1 Power Generation 1

Radio 3 Electric Cars 1 Prosthetic Limbs 1

Transistor 3 Electric circuits 1 Railroads 1

X-Ray Imaging / X-RAYS 3 ELECTRIC LIGHT 1 Rifle 1

alphabet 2 Electrical Lighting 1 Rocket 1

Anesthesia 2 Electrostatic Telegraph 1 Satellites 1

Contraceptives 2 Email 1 Sliced Bread 1

Currency 2 Facebook 1 Spaceflight 1

GPS 2 Facial Recognition Security 1 Spinning Jenny 1

Irrigation 2 Factory Model Assembly Line 1 Steel 1

Metalwork 2 Fiat Currency 1 Stone Tools 1

Plumbing 2 Fire 1 Suspension Bridges 1

Toilet 2 Firearm 1 Telecommunications 1

Turing machine 2 Gears 1 Tesla Electric Car 1

Vaccination 2 Genetic Engineering 1 Titleist ProV1 Golf Ball 1

Google 2 Glass 1 Touch screen 1

Semiconductor 2 Global Capital Markets, GCM 1 Train 1

Sewage 2 Global Positioning System 1 Vaccines/Antibiotics 1

Telegraph 2 Global Positioning System/Satellites 1 Wrist Watch 1

Money 2 Henry Ford’s Assembly Line 1 Writing Utensils 1

3D Printer 1 Hormonal Birth Control 1Abacus 1 Integrated Circuit 1Artificial Intelligence 1 Integrated Circuit Chips 1

Students’ Top 10 inventions

Students’ Top 11-30 inventions

Students’ Top 31-40 inventions

Start of this week

Recognizing Intellectual Property

Trademarks Logos & symbols

Copyrights Right to reproduce an

idea or information Includes software

Patents Invention that is new and useful

Trade Secrets Non-disclosed information that is valuable

What is a Patent? (review) 9

A form of intellectual propertyA grant of an exclusionary property right to

an inventor by the governmentPrevents the use of an invention by others for

the duration of the patent In return, the inventor must fully disclose the

details of the invention to the public

What is a Patent? (Contd.)10

Protects an idea, not an implementation

Patent owner can keep others from using the invention (they would be infringing) or license it

Patent ownership (assignment) can be bought and sold or traded

What Can Be Patented for Wireless Mobile Devices? (Review)

11

“Everything under the sun made by man.” Products: things Processes: ways to make things Methods: ways to do things

Improvements: better things Software and operating system

Both the above applies to wireless mobile devices!

What is a Patent (Contd.)12

Right to exclude the making, using, selling, offering for sale or importation of an invention (may not “infringe”)

Limited time (typically 20 years from the date of filing with USPTO)

Limited geographic territory (issuing country)

Monopoly awarded by the government forsharing the invention with the public

About USPTO13

Go to: www.uspto.gov

For example, you can search patents on this website#5, 778, 372 – “Remote retrieval and display management of electronic document with incorporated images.”#6, 339, 780 – “Loading status in a hypermedia browser having a limited available display area.”#5, 889, 522 – “System provided child window controls.”

Elements of a Patent Application14

Important parts of a Patent –for a Startup

15

PatentEng-Berkeley-LavianWeek 6: Validity and Infringement 16

INVENTORS

CLASSIFICATIONNUMBERS

PRIOR ART REFERENCES

TITLE

ABSTRACT

PRIOR ARTCONTINUED

ASSIGNEE

PatentEng-Berkeley-LavianWeek 6: Validity and Infringement 17

CLAIMS

SPECIFICATION

The Patent Process

Application Preparation Application Patent Office Rejections Patent Granting Patent Challenges

Application Preparation

Loop until perfect (order may vary): Clarify the invention Draft Claims Prior Art Search & Review Describe Preferred Embodiment Rough drawings

Prepare Final Drawings Prepare Application forms & fees “package”

Application Submission Submit “package” by certified mail

Get return receipt & acknowledgement from PTO Or – submit electronically The long wait, at least a year, maybe two

Depends on “art unit” work load and other factors Protected from date of filing—maybe.

Easier for an application to be challenged than after patent that has been granted

Application can be contested by evil-doer

Application Rejections

The patent examiner will review the patent according to PTO rules, often consults with other examiners and supervisor

Patents are almost always rejected at first Need to respond by “overcoming” the rejection:

Explain why rejection is invalid Prior art cited does not applyWhy it would not be obvious to one skilled in the art

Modify, add or delete claims Possible to talk with examiner, best done without attorney or

patent agent May loop through this process until patent granted or have

reached the limit on allowed number of “office actions”

Patent Granted - Hooray!!

Once notified that the patent is granted Legal protection begins Presumed to be a valid invention Patent and “history file” becomes publicly

available Individual inventors deluged with sales offers:

Buy engraved plaques, mugs, etc Sign up with companies to market your invention

(for a fee)

The Patent Challenge

When the patent is “asserted” against a product, the accused company will usually challenge the patent.

Review the patent and history file Look for prior art that would invalidate the patent Challenge PTO finding on obviousness or other errors Can patent be implemented by one skilled in the art If they can find something, they may:

use this to repel assertion ask PTO to “re-examine” the patent

May occur during negotiations or after a lawsuit is filed. A patent that survives a “legal” challenge becomes more valuable

because it has been “tested” But very expensive and risky.

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Identify Key Features of Product

Ensure “freedom to operate” for those key features likely to be developed by others

Identify Concepts Having Licensing Potential, For Example:

Those that may or will be included in an industry standard

Those that are likely to be used by third parties

Those that are unlikely to be a product differentiators

Those that are outside core business

Identify Solutions Having Defensive Potential

Those solutions that read on key competitor’s products and/or services (even if we do not plan on using / commercializing them)

Invent the Future!One fundamental patent can support an organization for up to 20 years!

Developing a Patent Filing Strategy

25

Claims & Elements I

Patent must contain at least one claimUsually contains several claims

Claims are numbered and clearly distinctInfringement of single claim is sufficient for infringement

Need not infringe two or all claimsEach claim usually contains several elements

Infringement requires correspondence between each element of a claim and an element of the allegedly infringing product or process

Two Basic Types of Claims

1. Independent Claims Stand by themselves Comprise a set of limitations (or elements) that define the

scope of an invention. Example: Claim 1 - An apparatus for moving objects consisting

of one or more round disks with axles connecting said round disks.

2. Dependent Claims Depend on an independent claim or another dependent claim Add additional limitations Example: Claim 2 – Apparatus of Claim 1 where the said axles

are affixed to said round disks using a ball bearing assembly.

Claim scope

Independent claims define patent scopeDependent claims are fallbacks

prior art

27

Patents Are…28

oUsefulo Practical

oNoveloNon-obvious

What is Not Patentable29

o Laws of nature (wind, gravity)o Physical phenomena (sand, water)o Abstract ideas (mathematics, a philosophy) o Algorithms (e.g., abstract math)o Anything not useful, novel and non-obvious (perpetual

motion machine)o Inventions which are offensive to public morality or designed

for an illegal activityo Inventions that cannot be implemented using

current technology (enablement)

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Types of Patents30

Type Is for Term #s

Utility

Function, use 20 years

6,214,874

Design

Appearance 14 years

D202,331

Plant Asexually reproduced

20 years

PP10123

Design Patent Example(What are the differences from a Utility Patent?)

31

http://www.theverge.com/2012/11/19/3659382/apple-design-patent-on-virtual-page-turn

Design Patent Example32

http://www.theverge.com/2012/11/19/3659382/apple-design-patent-on-virtual-page-turn

Utility Patents33

Patents Must Be Useful34

oUseful – process, methodo Meets a need or solves a problemo Fills current or anticipated needo Can be “reduced to practice”, operated

or enabled( e.g., can be built and function)

o Can be an improvement (better mousetrap)

Utility Patents Must Be Novel35

oMust be new oNot done before in substantially the same way

oNo “Prior Art”oNot known to the public before it was invented

Not described in a publication (*)Not used or offered for sale publicly (*)

o Includes your own work

* more than one year before filing patent application

Novelty Considerations36

o How “broad” is the inventiono What problem it solveso How it solves the problemo If the structure is known, are elements used in a

new way?o If the function is known,

is a new problem solved?

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Utility Patents Must Be Non-Obvious37

o Would not have been obvious to one “skilled in the art” to do thiso Includes combining different prior art

o Must not be trivial or insignificanto Examples

Substituting one material for another Changing the size (miniaturization) Changing implementation (software or

hardware, custom ASIC)

How Much Prior Art38

oFor Anticipationo A single piece of prior art practices all the elements of a (single) claim (e.g., the claim “reads on” this single reference)

oFor Obviousnesso Usually more than one reference used to

practice the claimo Could be one reference PLUS the knowledge

of the “Person Having Ordinary Skill in the Art”, aka PHOSITA

Secondary ConsiderationsIn Addition to Prior Art

39

Summary

Elements of a patentApplying for a patentDifference between utility and design patentsPatents are:

Useful Practical Novel Non-obvious

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