Polishing Search Skills via Patents, Trademarks, Official Gazette online

database

Chen JingFung (Grace)

@csie.ntut.edu.tw 2012/05/24

Chapter 6, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825 USPTO – official gazette, patent & trademarks online search

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

2 © 2012 Grace@iii.org.tw & cise.ntut

Classification Searching Process

for patents

© 2012 Grace@iii.org.tw & cise.ntut 3

Articulate essence of invention to obtain key

descriptive words

Use index to the USPTO/EPO classification to find suitable classes &

subclass

Check selected classes & subclasses (or other

classes…) in Manual of Classification &

Classification Definitions

Search in selected classes & subclasses Note relevant patents (& other references)

Recheck Index, Manual & Definitions using other keywords to find other classes & subclasses

Study relevant patents use the patentability flowchart (P. 32-34) to self-examine invention

If no relevant patents found

If relevant patents found

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 Grace@iii.org.tw & cise.ntut 4

claims of prior patent vs. your invention

• Common misconception – 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 Grace@iii.org.tw & cise.ntut 5

Prior patent

Your invention

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:

© 2012 Grace@iii.org.tw & cise.ntut 6 Ref: theverge.com

Patent lawsuit (2011 ~ )

Design Around lawsuit

Case study: Apple vs. Samsung

• 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

© 2012 Grace@iii.org.tw & cise.ntut 7

Fig ref: telegraph.co.uk + tested.com

iPad2 Galaxy Tab10.1N

Ref: FOSS patents (2012/1)

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

© 2012 Grace@iii.org.tw & cise.ntut 8

Ref: FOSS patents (2012/5)

US pat no. Apple Samsung

7469381 Scroll back with touch

panel

rubber-banding effect

Products: Galaxy tab 10.1, Galaxy S 4G … “blow glow” workaround

Might be to simple skill

Apple vs. Samsung

can’t design-around -2

• Samsung’s against Apple with design-around strategies for the ‘381’, ‘891’ & ‘163’ patents

© 2012 Grace@iii.org.tw & cise.ntut 9

US pat no. Apple Samsung

7853891 Timed window No offer the related products

(samsung) source code 7864163 Tap to zoom & navigate

Ref: order granting Apple’s motion-Docket no. 795

US district court (2012/5/4) for the Northen district of california

GRANT’s Apple’s motion

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 Grace@iii.org.tw & cise.ntut 10

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

© 2012 Grace@iii.org.tw & cise.ntut

Summary: A degree of translucency & position of the first window is adjustable by a timer

No translucency

11

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

© 2012 Grace@iii.org.tw & cise.ntut 12

Zoo

m

navigate

Gesture can determine which one should be zooming or navigating

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

© 2012 Grace@iii.org.tw & cise.ntut 13

IBM650

1956

1888 design: Colossus would use 1800 valves

Minimum configuration: Gigabit Bandwidth~ $100/machine Gigabit LAN ~ $40/machine Central switch ~ $1600/24-port

power

Card reader

Scope definition differentiation

example 1 - Standalone -> Cloud Provisioning

Web

App

DB

Email

App

OS Storage

App

OS Storage

Virtualization (VMM) Layer e.g. VMware, MS, Sun …

Hardware platform

Hardware platform

A server runs a

function

A server’s resource can be

shared to multi-OSs

Virtual Server Concept Encapsulate the server

software de-coupling from the hardware

Provisioning/ Rent service & charge by Time

Linux Windows

Android

Chrome

Cloud Computing

© 2012 Grace@iii.org.tw & cise.ntut 14

Scope definition differentiation

example 2 - Green Data Center (DC)

Private DC

Open DC offers application

SW -> HW -> standardization

Open DC

Intel as technical advisor

© 2012 Grace@iii.org.tw & cise.ntut 15 Ref: IDC 2012

Google’s DC is 3 in Asian (HK, Singapore & Taiwan), 6 in US & 2 in Europe

• Facebook unveiled (2011/4) “Open DC” design/solution

• FB proposed self design spec. as a draft

• Develop a low cost & energy efficient

— Server: low cost compute nodes

— Storage: low cost block storage

— DC: energy efficient

• 300+ members major from Telecom, financial, digital content & auto industry in which represent over $100B in annual IT spending

• For cloud deployment: Secure Federation, Automation, Common Management & Policy, and Transparency

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)

© 2012 Grace@iii.org.tw & cise.ntut 16 Ref: USPTO Official Gazette (OG)

Official Gazette for Patent –

published conent

• OG for patents (eOG:P) is available online for the most recent 52 issues

© 2012 Grace@iii.org.tw & cise.ntut 17 Ref: USPTO Official Gazette (OG)

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 Correction

Patents granted certificates to correct previously published material

summary Summaries of final decisions issued by the Trademark Trial and Appeal Board

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

© 2012 Grace@iii.org.tw & cise.ntut 18 Ref: USPTO Official Gazette (OG)

items content

Errata Correct info about previously published material

Service by Publication

Note the cancel trademark registration within 30 days, pending appearance of a registrant, assignee, or legal representative

Registration to Practice

Names of individuals who have received provisional recognition to prepare and prosecute patent applications

Notices from the Solicitor's Office

1. the public regarding changes 2. updates in Patent rules and regulations and/or other

patent-related items

Reclassification Reports

Lists newly established, deleted, or reclassified classes & subclasses, revised every 3 months.

Official Gazette for Patent -

news & notices

• Published issues – Date:

• May 22, 2012

– Week • 21

– Number: • 1378-4

• Example – Class = 450 – Subclass = 30

© 2012 Grace@iii.org.tw & cise.ntut 19

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 Grace@iii.org.tw & cise.ntut 20

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 USPTO's 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 Grace@iii.org.tw & cise.ntut 21

Trademark –

likelihood of Confuse

• Likelihood of Confusion is related to Similarity of Marks <- hard to examine

© 2012 Grace@iii.org.tw & cise.ntut 22

Sound

Appearance

Commercial impression

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

© 2012 Grace@iii.org.tw & cise.ntut

23

Goods

Services

Goods & Services

Trademark –

search system (TESS)

© 2012 Grace@iii.org.tw & cise.ntut 24

85025881 F&E

© 2012 Grace@iii.org.tw & cise.ntut 25

Check trademark-“f&e”

applicant’s address

© 2012 Grace@iii.org.tw & cise.ntut 26 Ref: business case studies.co.uk

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 Grace@iii.org.tw & cise.ntut 27

Reference

© 2012 Grace@iii.org.tw & cise.ntut 28

• 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: http://fungsiong.blogspot.com/ – Introduce hybrid TV/Smart TV (hbbTV) including widget design,

Android technology (API), system, ecosystem, framework, service, application…,

– Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile • About how to teamwork

– Some programming info. as Apache wookie, refactoring tech, CE-HTML, a solution about removing a backdoor “Trojan” & surveillance paper