Patenting Wireless Technology (cont) Dr. Tal Lavian UC Berkeley Engineering, CET

Last Week: What is a Patent? 2 A form of intellectual property A grant of an exclusionary property right to an inventor by the government Prevents 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 (the quid pro quo)

Last Week: What Can Be Patented for Wireless Mobile Devices? 3 “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!

Last Week: Elements of a Patent Application 4 Title of the invention Cross Reference to related applications Stetement regarding federally sponsored research or development Names of the parties Background of the invention Brief summary of the invention Brief description of the several views of the description Detailed Description A claim or claims, abstract of the disclosure

PatentEng-Berkeley-Lavian Week 6: Validity and Infringement 5 INVENTORS CLASSIFICATION NUMBERS PRIOR ART REFERENCES TITLE ABSTRACT PRIOR ART CONTINUED ASSIGNEE

PatentEng-Berkeley-Lavian Week 6: Validity and Infringement 6 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 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 apply Why it would not be obvious to one skilled in the art Modify, add or delete claims Possible to talk with examiner, best done with attorney or patent agent (keep record of what was agreed to & copy examiner) 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.

13 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

14 Claims & Elements I Patent must contain at least one claim Usually contains several claims  Claims are numbered and clearly distinct Infringement of single claim is sufficient for infringement  Need not infringe two or all claims Each 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 scope Dependent claims are fallbacks  prior art 16

Patents Are… 17 o Useful o Practical o Novel o Non-obvious

What is Not Patentable 18 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 activity o Inventions that cannot be implemented using current technology (enablement) ‏

Types of Patents 19 TypeIs forTerm#s UtilityFunction, use20 years6,214,874 DesignAppearance14 yearsD202,331 PlantAsexually reproduced 20 yearsPP10123

Design Patent Example (What are the differences from a Utility Patent?) 20

Design Patent Example 21

Utility Patents 22 o Most applicable to electronics and software engineers o Usually the most valuable, complex and difficult to obtain o Must satisfy key criteria: o Invention must be  Useful  Novel  Non-obvious

Patents Must Be Useful 23 o Useful – process, method o Meets a need or solves a problem o Fills current or anticipated need o 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 Novel 24 o Must be new o Not done before in substantially the same way o No “Prior Art” o Not 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 Considerations 25 o How “broad” is the invention o What problem it solves o How it solves the problem o If the structure is known, are elements used in a new way? o If the function is known, is a new problem solved?

Utility Patents Must Be Non-Obvious 26 o Would not have been obvious to one “skilled in the art” to do this o Includes combining different prior art o Must not be trivial or insignificant o Examples  Substituting one material for another  Changing the size (miniaturization) ‏  Changing implementation (software or hardware, custom ASIC) ‏

How Much Prior Art 27 o For Anticipation o A single piece of prior art practices all the elements of a (single) claim (e.g., the claim “reads on” this single reference) o For Obviousness o Usually more than one reference used to practice the claim o Could be one reference PLUS the knowledge of the “Person Having Ordinary Skill in the Art”, aka PHOSITA

Secondary Considerations In Addition to Prior Art 28 o The invention's commercial success o Long-felt but unresolved needs o Previous failure of others o Skepticism by experts o Praise by others o Teaching away by others o Solves an unrecognized problem o Solves an insoluble problem o Copying of the invention by competitors o Omission of an element o Crowded art o Not suggested modification o Unappreciated advantage

Summary Elements of a patent Applying for a patent Difference between utility and design patents Patents are:  Useful  Practical  Novel  Non-obvious 29