Exam Review Flashcards
What can be patented?
any new and useful process, machine, manufacture, or composition of matter.
Patentable inventions must be:
Implementable, Useful, Novel, and Non-obvious
Patentable inventions do not need to be:
Implemented, used by millions of people, completely different, brilliant
First step in inventing process
Identify Need
Second step in inventing process
Criteria
Third step in inventing process
Prior Art
Fourth step in inventing process
Brainstorm Solution Approaches
Fifth step in inventing process
Develop/Refine/Document Best Approach
Sixth step in inventing process
Consumer/Expert Feedback
Seventh step in inventing process
Justify Invention Value
Eighth step in inventing process
Patent Application
Common behaviors of good teams:
- team members spoke in same proportion
- high average social sensitivity
A well-described need typically:
- describes core need without suggesting a solution approach
- does not include an adjective
- cannot be broadened without losing its essential purpose
- clear and understandable
- concise (one phrase or sentence)
Criteria
- attributes of a theoretically ideal invention
- means of evaluating an invention (especially vs. target market)
- applies to full experience of consumer
- often expressed hierarchically
Prior Art
- how have others solved the need?
- limitations of prior art vs criteria?
Searching for Prior Art
Patent based:
patents.google.com - search on CPC (Cooperative Patent Classification), one click with class and subclass
epo.org - search first by Patent Class, search top down and include related subclasses or class and subclass
uspto.gov - US classes only, not friendly, many search fields
Others:
google.com
google.com/products
youtube
scholar.google.com
Some elements of a patent:
- abstract
- figures
- background
- description of drawings
- detailed description of invention
claims
Types of I.P. protection
- Trade secret
- copyright
- Patent
- Trademark
- Trade dress
Trade Secret
Don’t tell anyone and hope they don’t hear about it or create it.
Copyright
Protects the expression of a concept
ex. somebody cannot copy your software program
Patent
Protects the concept
ex. somebody cannot use key elements of your invention
Trademark
Protects the name
ex. Martin Spencer cannot advertise his word processing software as “MS-WORD”
Trade dress
Protects (total) vision appearance; consumers must recognize it
Other patent requirements
- reduction to practice: the patent application must describe the invention in enough detail to enable one of ordinary skill in the art to practice the invention
- duty to disclose: inventor must disclose info material to patentability
- patent application must be filed prior to: public use, sales, publication
A patent is a bargain between:
Inventor and government
- Inventor provides: written description of the invention, in enough detail so it can be practiced, for the benefit of society (science and useful arts)
- Government provides: right to exclude others from using your invention, for 20 years after filing date
Who owns an invention?
the inventors
- often inventors assign (explicitly or implicitly) their patent rights to their employed (for compensation)
Who is an Inventor?
- Someone who made a substantive inventive contribution to one or more of the invention’s claims
- NOT someone who: wrote software for an already completed program design, implemented a detailed specification, ghostwrote the disclosure or patent application, you owe a favor
- Incorrect inventorship can invalidate a patent
Brainstorming
- Generate lots of ideas without evaluating
- Relax constraints
- Angel Advocate
- In small groups
- Individually & then re-connect with group
Clarkson wants patents to:
- something companies will want too use enough to pay a license fee (limited alternatives)
- something we can discover others using
- must not facilitate a criminal, immoral, or other inappropriate activity or otherwise reflect poorly on Clarkson
Why study prior art?
- Competition - analysis (ex. versus criteria)
- Ideas - for criteria, solution approaches
- Enabling - incorporation by reference into detailed description of invention
- Improves your ability to write patents applications
Searching prior art tips
= “ “ phrase searching
- - exclude word
- ~ similar words
- filetype:
- OR
- .. search date ranges
- * use in place of unknown word
searching for Prior Art
Using Class#/Subclass# on 1st page of patent
- e.g. US classification: 5 = beds 5/9.1 = bunk
- after have good prior art, see if there are common class #/subclass # and search
Documenting prior art
- prior art brief name
- picture (key figure of a patent or product)
- sources
- summary of prior art
- pros and cons(vs criteria)
Classification of Products
ex. Amazon
- Department
- Camping and Hiking Equipment
- Camping Tents
PHOSITA
Person having ordinary skill in the arts
Milne Test
Was it obvious to me?
Did I think of the solution the first time I thought about the problem? Or did I need a second session?
What a Patent is (and is not)
- it is: a right to exclude others from practicing your claimed invention for a period of time
- it is not: a right to practice your invention
Value of Patents:
Legal Value of Patent:
right to sue infringers
Business Value:
- lawsuit to recover damages
- sell or license the patent
- block competitors
- retaliate against lawsuits
- customers like (marketing); investors
What questions commonly arise in patent litigation?
Does the defendant infringe?
Are the claims valid?
What are the damages?
Injunctions
A court order prohibiting specific activities
Damages
Monetary payments
Goal of Infringement
to put the patentee in the position they would have been without infringement
How damages are measured
- Lost Profits: profit of “what a patentee would have made”
- Reasonable Royalty: What the license agreement “would have been”
Infringement Solutions
- The infringer stops using or selling the invention
- The infringer and the patent owner sign a licensing agreement
- The infringer pays the patent owner monetary damages
Functional Requirements-Design Parameters Matrix
Corollary: each FR requires a DP
- this is denoted by an X which indicates that DP will influence FR
- or a 0 which indicates that DP will not influence FR
Fully coupled designs require iteration to reach the desired solution
The DPs do not address the FRs individually
Axiom one: maximize the independence of the functional elements
Lessons from F-35 Chief Engineer
My Problem My Solution
l l
Similar Problem ——> Known Solution
(in different context?)
Build Something —-> Fly it —–> Learn
<—————– Re-design <—————-
- Reaching a Design Decision
- Listen
- Discuss/Debate for a limited time
- Technical leader decides
Decomposition
List alternatives for accomplishing each step
International Patent Law
- A patent is valid only in the country of filing
- Each country has its own laws, but treaties encourage cooperation
- U.S. + Europe + Japan —-> heavy cooperation
- The big 3 + China + Korea —> ~90% of filings
- U.S. inventors with home run inventions:
- Initial filing date in the US (call it X date)
- Must file elsewhere by X + 1 year
- Patent Cooperation Treaty (PCT) filing at X+1 year
- X + 2.5 years to file elsewhere
Patent Trolls, Non-Practicing Entity, Patent Holding Company, Patent Assertion Entity
Corporations which own patents but which do not make a product or sell a service involving the patents; make money through licensing and lawsuits
Creating Inventions
- Often the process of writing up a marginal idea will turn into a good one
- Study the competition; build off their ideas
- Analogies from other fields; connections; combine
- Extend new technologies & their applications
e.g. 3D-printing, Internet of Things, Drones
Grasshoppers
Companies which use others’ valid I.P. without paying license fee
Legal value of patent
right to sue infringers
Business value of patent for trolls
- lawsuit to recover damages
- sell or license the patent
- customers like (marketing); Investors
International Patent Litigation
- Make, Sell, Use, Import (mfg/market you/competition)
- History, Current Events, Culture, Laws, Co. rep
- Japan
- Against Japanese firm? Against Chinese firm?
- Dislike conflict - Germany (get injunction in 6 months)
- Civil vs Criminal Cases
- Teams of 2 (business dealer + legal)
- 1 year to negotiate (probably 1.5 years)
- 1-3% of revenue (right to all patents; litigate maybe 5)
Which solution approach is best?
Reduce to a promising few approaches
Criteria Analysis:
- Advantages vs other solution approaches
- Advantages vs. competition (criteria)
- Drawbacks vs competition (criteria)
- Target market (characteristics)
What is your emotional reaction to it?
Evaluating Solutions - de Bono’s Thinking Hats
Consciously imagine putting on a different hat and evaluate solution from that hat’s perspective
Yellow - what is good about it? - angel investor
White - objective, factual (e.g. vs criteria)
Red - emotional, gut feeling, intuitive
Black - what is bad about it? what can go wrong?
Green - creative, brainstorm, relax
Practical Considerations
Want a strong (competitive) solution but also:
Feasibility
- How much time do you have?
- What skills does your team possess?
How much will you enjoy development?
Design with more function than prototypes?
Non-Disclosure Agreements
Typically include:
Subject being discussed (what to not disclose)
Expiration Date
Lawyer Language
- it can be difficult/awkward to solicit an NDA from someone from whom you are requesting a favor.
Alternative to an NDA
Consumer/Expert Feedback
- suggestions for avoiding a “public disclosure”
1. Ask the potential consumer/expert if you can have a private conversation
- after conversation, email person to A) thank them for the conversation B) any other points you want to make C) remind the person to please keep the conversation private
- keep copies of all email exchanges on topic
2. Chat
3. At the end of the conversation, remind the person that the conversation is private
4. Document in the invention report that the person agreed to keep the conversation private
Claim 1
A single sentence that:
contains a few essential elements of the invention; the totality must be unique
A claim defines the intellectual property claimed
A powerful claim is broadly defined
Claim 1 Layout
A [subset of your invention title but nothing new]
element 1;
element 2;
relationship between elements 1 and 2;
element 3;
element 4
Alternating Work & Relax
- THINK consciously about the need and possibilities for satisfying it (diligently and on multiple occasions
- Spent time not thinking about anything (exploit your subconscious… but be aware)
- Relax/Doodle
Technologies
MRP
Myopic Choices
Satisfy demand even if infeasible
Fast
LP
Optimal Choices
Feasible
Slow
Prototype Purposes
Learn e.g. confirm the invention works
Stimulate ideas for how the invention may work
Communicate how the invention will work
Potential consumers (feedback on usability)
Potential investors
Types of “Prototypes”
Illustrative non-functional - communicate only
Proof of concept - test a technical aspect (risk)
Prototype - (at least) partially functional
Pilot - good enough for small scape repeat use
Minimally viable product - people will buy it (sell it; get user feedback quick; improve later)
Pilot Testing
Pilot - good enough for small scale repeat use
Learn from the pilot testing
- confirm that the invention works
- opportunities for design improvement
Ideally, diverse consumers will pilot test
Documenting Prototype/Pilots
What did you learn from it?
What conjectures confirmed? Rejected?
New criteria discovered?
Design improvements suggested or inspired?
Future experimentation required
