Working model to patentability

Working Model to
Patentability -> Statutory Class

Chen JingFung (Grace)
@csie.ntut.edu.tw
2012/03/15
Chapter 4 & 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825

Outline

• Secret for intangible idea -> tangible assets
• Working Model to realize substance
– Work invention by yourself
– Implement your idea via others (Ex. Consultants)
• How to avoid “disputes”

• Patentability
– Introduce legal requirements

Grace@cise.ntut 2

keep secret when ask
• Some good alternatives that can protect your
invention
– Mark before advice
• Top of logbook entry labeled that “… understand xxx’s
confidential” + date
– xxx: name of invention
• Add a “Comments” column to indicate that you value
their opinion
– Ask them to sign + date as witnesses
– Get your consultants to sign the “Nondisclosure
Agreement” <- Serious!!

Grace@cise.ntut 3

Lock for nice guy or theft
vs.
– Email (inferior to the other devices)
• Ex. Send a confirming or thank-you letter (before/after)

– No matter how to prevent loss of trade secret
(your invention), don’t go overboard
• Positive thinking
– Most stolen inventions mean they have business value

• “Let them steal it – they don’t know how much work
they’re in for”
– Said by the highly successful inventor Paul Brown

Grace@cise.ntut 4

Working Model -
Fig ref: digitalarchives.tw
Show your ambition
• Build & test a working model (prototype) for
your invention
– Engage someone who will do it for you for a fee
($$)
– Working model can show your marketing
consultants, plus valuable info about
• Operability, cost, technical problems & other factors
(+/-)
• Build a “virtual prototype” (computer
simulation)
Grace@cise.ntut 5

Working Model (WM) –
training environment (Arduino)
• Arduino (hackspace@wiki; XinCheJian@china) is
an open-source electronics prototyping platform
based on easy-to-use hardware & software
– Receiving input from a variety of sensors
• Controlling lights, motors & other actuator
– Microcontroller on the board is programmed using
• programming language
– based on Wiring
• Development environment
– Based in Processing

– Can be stand-alone/
communicating with software running Fig ref: http://www.arduino.cc/
video: history of Arduino 2010
• E.g. flash, processing, MaxMSP
Grace@cise.ntut 6

Use a Model Maker
• Hire 1 ~ more model makers for a fee/ for a
percentage of the action
– Can’t build & test it (WM) yourself
– Use Model makers as engineers, technicians, &
teachers 

– Where can find makers?
• There may be a workshop (seminar) in your area
– Will supply you with tools, space & assistance for a fee
Grace@cise.ntut 7

Workshop – Exhibition place
• San Francisco area hosts Fig ref: botjunkie.com

“Techshop”
– A 15,000 foot2 membership-
based zone
– Provide members with access
to tools, equipment,
instruction, & support
community http://techshop.ws/

– Support people build the
things which they wants
– Open in 5 location in US (+ in
planning: 3):
• Opening: Menlo Park, Raleigh,
San Francisco, San Jose, Detroit
• In planning: Portland, Brooklyn,
Los Angeles

Grace@cise.ntut 8

Agree
ment
• Recital:
– certain skills
to develop
project
completely

• Mediation &
Arbitration
– Shall
negotiate in
good faith …

9
Grace@cise.ntut Ref: Form4 – 3, Patent It Yourself , 2011, P.503-504

Detail description for Done:
wire-frame model
• Wire frame model
– A visual presentation of 3D/physical object
• Composing by vertices + straight lines or curves
– Programming tools
Fig ref: wiki
• DNC machine tools, CAM, 3D CAD (surface &
solid), CNC

– Application
• Animation, CGI, 3D CG, Polygon mesh, vector
graphics…
• Mockup (design new product)
– Automotive devices, systems engineering, military
acquisition (F-35 lightning II), consumer goods,
furniture & cabinetry, software engineering… Fig ref: fredbizar.blogspot.com
10
Grace@cise.ntut

Detail description for Done:
plastic-covered
• Plastic-covered can make many
types things
– Advantage:
Fig ref: III-SNSI R&D 100: In-Snergy
• useful in the building and
construction, electronics, packaging
(gladwrap), transportation
industries
• Plastic is good, light, strong and
cheap to produce
– Drawback
• is indestructible
Ref: answers.com Fig ref: besthousedesign.com
Fig ref: iii 11
Grace@cise.ntut

Trade rule

• Manner of payment
– Usually 1/3 at start, 1/3 upon construction & 1/3 on
acceptance by you
– Or pick the state where you reside if the consultant is out-
of-state
• Break the law @ USA
– The Agreement requires the Consult to perform in a timely
manner
– Void the Agreement & pay only 50%
– Have the Consultant pay an agreed-upon penalty for every
day
– Agreement contains a self-explanatory provision
• Regarding the Consultant’s prior invention

Grace@cise.ntut 12

Handle people problem
with Outsourcing
• Naturally brings up the issue during hiring consultants
to build, test or develop
– Consultants often come up with patentable improvement,
ramifications …
– Consultant’s work should follow under the Agreement
– Involve disputes as possible in Agreement
• Who will own (?) & be able to use the consultant’s invention (?)
– Prevent many misunderstandings, argument, and event lawsuits later on
• The consultant won’t be able to claim that a valuable invention
– Because it was made on the Consultant’s time
• Apply patents in joint names
– If the invention is closely related to / improves on yours

Grace@cise.ntut 13

Patentability (?)
• 4 legal requirements for
Unobvious? getting a utility patent
(35USC 103)
– Statutory Class by patent law
– Utility as a useful one
– Novelty
Novelty?
• A new physical feature (?)
(35 USC 102)
• A new combination of separate
old feature (?)
• A new use of an old feature (?)
Useful? (35 USC 101) – Unobvious
• Can provide one or more new and
unexpected results (?)
a statutory class ? (35 USC 101) • A skill can make of innovation in
Process (method), machine, the specific technology
manufacture, composition, – How to measure “design patent”
new use? by a feeling (ornamental or
aesthetic sense) (?) 14
Grace@cise.ntut

PTO judge’s criteria for 4 legal
requirements

• The last one “Unobvious” is
Unobvious relatively high
– First 3 tests (Statutory class,
Novelty Utility + Novelty) is short steps
– PTO review procedure
Utility • Fit within at least one statutory
class (?), Have utility (?), Posses
novelty (?)
Statutory class • Unobvious (?) <- reject by
– Most of patent application fail to
this (almost ½ patent applications)

Grace@cise.ntut 15

Requirement #1:
the statutory classes
• PTO must consider your invention “within a
statutory class or category”
– 5 classes: process (method), machine, manufacture,
composition, new use
– Most invention can squeeze into at least one of them
• Overlap to some extent
• You don’t have to specify the one to apply
– carefully “nonstatutory subject matter”
• PTO may reject it under MPEP Section 101
• you should be sure it does not fall into one of the exceptions
below…
Patent Laws - PTO publishes its Manual of
Patent Examining Procedure (MPEP)
16
Fig ref: Patent It Yourself, 2011 Grace@cise.ntut

Statutory Class [SC] (1) –
Processes including Software
• Nonstatutory (in past) -> statutory case
– Show a useful result can earn a patent
• US4597578(1986) title: Golf club grip

useful result

No. 1 Tseng wins LPGA
Thailand 2012
Grace@cise.ntut 17

Conventional Process
• Conventional process are heat treatments,
chemical reactions or chemicals
– Show better performance than before
• PTO has been granted a patent (US7470439, 2008) about
feeding chickens a special diet that results in better eggs,
and analyzing those performance.

Live weight

Egg production

Grace@cise.ntut 18

exception for conventional process
• A patent lawsuit talk on treatment
procedure
– Describe a process of attaching a hairpiece to
a bald person’s scalp by putting suture
anchors in the scalp and sewing the piece to
the suture anchors
– Surgical operations can be patented

• However, the law exempts medical
practitioners from infringing any patent
on a medical procedure
Grace@cise.ntut 19

introduce software process
• Most software-related invention are claimed as
process
– Also software inventions can also be claimed as
machines
• Algorithms cannot be patented without involving
hardware <- “abstract idea”
– An algorithm is a step-by-step problem-solving
procedure
case result
Software/algorithm affects some
Falls within a SC as a machine/process
Hardware/process
Software/algorithm merely manipulates
PTO will not consider it within SC
numbers or solves an algorithm
Grace@cise.ntut 20

introduce software process

• Software patentability case
– analyzes EKG, spectrographic, seismic, or data bit
signals, controls a milling machine, creates useful
images on a PC screen, the printing formats (math
formulae), recognizes patterns or voices, or selects
stocks that will beat an index

• Software non-patentability case
– Number of crunches, non-useful curve, calculates
distances without any hardware involved …
Grace@cise.ntut 21

software process (algorithm)
• Successful case on algorithm
– Statutory subject matter (SSM)
• The main patent court determined an algorithm for
making a smoother diagonal line on a monitor as it
look well In re Alappat, 33 F.3d 1526 (CAFC 1994)
• A general-purpose computer data structure that
organizes information into different categories within
infinite number In re Lowry, 32 F.3d (CAFC 1994)
– Human can control the selection
– Key-point: hardware must be substantially
involved
Grace@cise.ntut 22

Internet & business method patents
• Business method is also difficult to patent as
software patent
– Because they both involve math, formula or algorithm
US5193056, 1993, Data processing system for hub and
spoke financial services configuration Calculating “data relationship”
about portfolio (Hub) with
many different mutual funds
(Spokes)

State Street Bank & Trust Co.
v. Signature Financial Group,
Inc., 149 F.3d 1368 (Fed. Cir.
1998), cert. denied 119 S.Ct.
851 (1999)
Grace@cise.ntut 23

Summary

• Discuss about Secret invention -> patentability
– The principle secret ->
– build working models ->
– introduce how to review patentability
• Including 4 legal requirements
– statutory class (focus on process), utility, novelty, unobvious

Grace@cise.ntut 24

HW

• Try find some news about your invention
– Write down to contribute it for team & yourself
• (1) Related the best one in your team
• (2) Related your invention

Grace@cise.ntut 25

Reference
• David Pressman, chapter 4 &5, “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
• Analysis “State Street Bank & Trust Co. v. Signature Financial Group, Inc.”,
149 F.3d 1368 (Fed. Cir. 1998),
– Lang CN: http://iip.nccu.edu.tw:8090/iip/document/case_1999_1_23.pdf
– Lang EN:
http://en.wikipedia.org/wiki/State_Street_Bank_v._Signature_Financial_Grou
p
• Blog: http://fungsiong.blogspot.com/
– Introduce hybrid 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

grace@csie.ntut 26

Working model to patentability

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