Patenting Wireless Technology Week 5

Dr. Tal Lavian

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

UC Berkeley Engineering, CET

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Review - last week

PatentEng-Berkeley-LavianWeek 6: Validity and Infringement 3

INVENTORS

CLASSIFICATIONNUMBERS

PRIOR ART REFERENCES

TITLE

ABSTRACT

PRIOR ARTCONTINUED

ASSIGNEE

PatentEng-Berkeley-LavianWeek 6: Validity and Infringement 4

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

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Start - this week

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

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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

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Patents Are…16

oUsefulo Practical

oNoveloNon-obvious

What is Not Patentable17

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)

http://mimiandeunice.com/2012/08/27/achoo-again/

Types of Patents18

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?)

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

Design Patent Example20

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

Utility Patents21

Patents Must Be Useful22

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 Novel23

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 Considerations24

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?

http://www.cartoonistgroup.com/store/add.php?iid=98295

Utility Patents Must Be Non-Obvious25

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 Art26

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

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Summary

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

Useful Practical Novel Non-obvious

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