Post on 13-Jan-2015
description
Defending your rights –
invention decision
Chen JingFung (Grace)
@csie.ntut.edu.tw 2012/05/31
Chapter 7-8, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825
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
2 © 2012 Grace@iii.org.tw & cise.ntut
The proceeding for
Intellectual Property (IP) Protection
File a PPA Test the market for
up to a year and then consider RPA
Keep it a trade secret
File a design patent application
Use a clever trademark &
copyright coverage
Use distinctive “trade dress” for
unfair competition coverage
© 2012 Grace@iii.org.tw & cise.ntut
3
Virtual protection physical protection physical protection
Virtual protection physical protection
• After making commercial evaluation & search, consider following alternatives – Advice: don’t give up you day job
The advantage for filing an application
• Why file a patent application before offering the invention to a manufacturer
© 2012 Grace@iii.org.tw & cise.ntut 4
Offensive rights for your invention
• your invention will be defined in precise terms w/ formal drawing & be established your claim in PTO
Respect for your invention
• After showing your application, a manufacturer will think you’re a serious player
Have rights even if you sign a Waiver
• Your powerful rights against underhanded dealing by the manufacturer
Offer more so get more
• most manufacturers want a proprietary or privileged position (commercial advantage)
• They may to buy your invention with its coving patent application
inventor
corporate
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
© 2012 Grace@iii.org.tw & cise.ntut 5
Fig ref: klnce.edu
reverse engineering
Other protection methods if non-
patentability
© 2012 Grace@iii.org.tw & cise.ntut 6
Commercial potential $$
Non-Patentability <- Close prior art but
not a dead ringer Record
conception properly
Provide a clever trademark Ex. registered mark®
& unregistered mark(TM, SM)
Obtain a design patent
TM for goods SM for services
Provide distinctive
”Trade Dress”
Provide copyrightable
labeling
Consider Trade secret
Submit your idea to
Quirky.com
Charge submitters idea = $10 Pay royalties on the sales
Trademark vs. Trade dress
Trademark Trade dress
Definition A brand name for product
A product’s physical appearance, including its size, shape, color, design, & texture
Online search tool
TIPO - trademark reference database USPTO – TESS (Trademark Electronic Search System)
example
SOL Disclaimer: “HELMET”
Thai life insurance http://www.thailife.com
七喜(7.Up) http://www.7up.com/
© 2012 Grace@iii.org.tw & cise.ntut
7 Ref: answers.com/trademarkia.com/wememap.com
Copyrightable labeling
definition A legal concept by most governments, giving exclusive rights on the creator of an original work (i.e. “the right to copy”)
A non-profit organization which aim to protect the range of creative works available
coverage Exclusive rights • Produce copies or reproductions &
sell those copies (including typically, electronic copies)
• Import or export the work • Create derivative works • Perform or display the work publicly • Sell or assign these rights to others • Transmit or display by radio or video
Six major licenses of CC • Attribution (CC BY) • Attribution share Alike(CC BY-SA) • Attribution No Derivatives (CC BY-ND) • Attribution Non-Commercial(CC BY-NC) • Attribution Non-Commercial Share
Alike (CC BY-NC-SA) • Attribution Non-Commercial No
Derivatives (CC BY-NC-ND)
Arduino (CC BY-SA); Wikipedia (CC BY-SA)
© 2012 Grace@iii.org.tw & cise.ntut
8
Green licenses have been ported Blue licenses are
being ported Sky licenses ports
planned
Ref: copyright(wiki)
History about expanding
copyrights (US)
Discussion – trade secret
• Keep it secret
• Effect of “patent pending” notice
• Disadvantage of keeping secret
© 2012 Grace@iii.org.tw & cise.ntut 9
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)
– Provided you’ve filed an NPR (Nonpublication Request)
© 2012 Grace@iii.org.tw & cise.ntut 10
Filing patent application (RPA)
Published Applications
Issued Patents
Anyone copied it
Ask back money
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 Grace@iii.org.tw & cise.ntut 11
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 Grace@iii.org.tw & cise.ntut 12
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
– Anyone (Pirate) sees your product may copy it and file a fraudulent patent application on it
© 2012 Grace@iii.org.tw & cise.ntut 13
issuance of a valid patent
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)
© 2012 Grace@iii.org.tw & cise.ntut
14
Invention decision flowchart
© 2012 Grace@iii.org.tw & cise.ntut
15
Invent something Record conception => Build & test it
or filing PPA
Commercial potential (?)
Prepare a patent application
Patentable(?)
Try to sell invention & patent application to
manufacturer
Significant market novelty
Good trademark, trade dress,
copyright-labeling
Manufacture & distribute yourself
Without utility application
Manufacture & distribute
yourself
Try to sell it
Manufacture & distribute it
Prepare a patent application
Is invention discoverable final product
Keep details secret for 20 years
Prepare a patent
application
Filing before manufacturing
Manufacture & market
successful?
File a patent application
w/ 1 yr
Manufacture & distribute it
Keep as trade secret
Patent pending
Invent sth else
Invent sth else
A PATENT APPLICATION
TO PTO
© 2012 Grace@iii.org.tw & cise.ntut 16
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
© 2012 Grace@iii.org.tw & cise.ntut 17
Not indicate any field of the invention Not mention any problems with the prior art
You don’t know Your invention doesn’t solve
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 Grace@iii.org.tw & cise.ntut 18
Patent application - electronic forms
• PTO provides online patent forms over Internet via EFS-Web (Electronic Filing System)
© 2012 Grace@iii.org.tw & cise.ntut
Form number Last updated introduction
PTO-2038 2012/05 Credit Card payment form & instructions for filing fee
SB05(PTO/SB/05) 2008/08 Utility patent application transmittal
SB17(PTO/SB/17) 2011/09 Fee transmittal (PTO/SB/17 removed “additional fees” because other PTO forms already provide)
SB17i(PTO/SB/17i) 2009/07 Processing Fee Under 37 CFR 1.17(i) Transmittal
SB17p(PTO/SB/17p) 2009/07 Petition Fee Under 37 CFR 1.17(f), (g) & (h) Transmittal
SB35(PTO/SB/35) 2009/07 Nonpublication Request(NPO) under 35 U.S.C. 122(b)(2)(B)(i) 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 under penalty of perjury <- show you’re the true inventor SB01A(PTO/SB/01A) 2009/01
SB08* 2010/02 Information Disclosure Statement, list of prior art cited by applicant & copies; the form will ask you the potentially affect novelty and nonobviousness
SB14 EFS-WEB 2008/11 Application data sheet (ADS) to provide the bibliographic data (inventors’ names, address ..) + PTO/SB/01A
19
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) © 2012 Grace@iii.org.tw & cise.ntut
20
© 2012 Grace@iii.org.tw & cise.ntut
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 embodiment – The detailed description explains how the main
embodiment of the invention works or operates
• Description for additional embodiment + Figs. Y-Z – Describes the structure of an alternative embodiment
• Operation for additional one – How to operate the alternative embodiment
• … 21
3 subsections (operation, description, operation…) can extend as a train
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 © 2012 Grace@iii.org.tw & cise.ntut
22
After PTO received your application
• 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
© 2012 Grace@iii.org.tw & cise.ntut 23
PTO run a first exam for doc.
Examiners Your application
E-file
Traditional postal
2
1
3 Amendment
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 Grace@iii.org.tw & cise.ntut 24
Reference
© 2012 Grace@iii.org.tw & cise.ntut 25
• 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: 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