Polishing search skills

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

© 2012 Grace@iii.org.tw & cise.ntut 2

Classification Searching Process
for patents

Check selected classes &
Use index to the
Articulate essence of subclasses (or other
USPTO/EPO classification
invention to obtain key classes…) in Manual of
to find suitable classes &
descriptive words Classification &
subclass
Classification Definitions

If relevant patents found

Recheck Index, Manual & Search in selected classes Study relevant patents
Definitions using other & subclasses use the patentability
keywords to find other Note relevant patents (& flowchart (P. 32-34) to
classes & subclasses other references) self-examine invention

If no 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


claims of prior patent vs. your invention
Your
invention

• Common misconception Prior patent
– 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


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:
Patent lawsuit
(2011 ~ )

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

Design Around lawsuit
Case study: Apple vs. Samsung
iPad2 Galaxy Tab10.1N
• 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
Fig ref: telegraph.co.uk + tested.com
Ref: FOSS patents (2012/1)
7

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
US pat no. Apple Samsung
7469381 Products: Galaxy tab 10.1, Galaxy S 4G …
rubber-banding effect
Scroll back “blow glow” workaround
with touch
panel

Might be to
simple skill
Ref: FOSS patents (2012/5)
8

Apple vs. Samsung
can’t design-around -2
• Samsung’s against Apple with design-around
strategies for the ‘381’, ‘891’ & ‘163’ patents

US pat no. Apple Samsung

7853891 Timed window
No offer the related products
(samsung) source code
7864163 Tap to zoom & navigate

US district court (2012/5/4) for
the Northen district of california
GRANT’s Apple’s motion
Ref: order granting Apple’s motion-Docket no. 795


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

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

No translucency

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

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
Zoom

navigate

Gesture can determine
which one should be
zooming or navigating 12

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
1956

power

IBM650 Card
reader

Minimum configuration:
1888 design: Colossus Gigabit Bandwidth~ $100/machine
would use 1800 valves Gigabit LAN ~ $40/machine
Central switch ~ $1600/24-port 13

Scope definition differentiation
example 1 - Standalone -> Cloud Provisioning

Web Chrome
App App
Android
OS Storage OS Storage
App
Virtualization (VMM) Layer
Windows Linux e.g. VMware, MS, Sun …

DB

Email Hardware Hardware
platform platform

A server’s Virtual Server Concept Cloud Computing
A server
resource can be Encapsulate the server Provisioning/
runs a
shared to software de-coupling from the Rent service &
function
multi-OSs hardware charge by Time
14

Scope definition differentiation
example 2 - Green Data Center (DC)
Open DC
Private DC Intel as technical advisor

Open DC offers application
SW -> HW -> standardization

• Facebook unveiled (2011/4) • 300+ members major
“Open DC” design/solution from Telecom, financial,
Google’s DC is 3 in Asian • FB proposed self design digital content & auto
spec. as a draft industry in which
(HK, Singapore & Taiwan), represent over $100B in
• Develop a low cost &
6 in US & 2 in Europe annual IT spending
energy efficient
— Server: low cost • For cloud deployment:
compute nodes Secure Federation,
— Storage: low cost Automation, Common
block storage Management & Policy,
— DC: energy efficient and Transparency
Ref: IDC 2012 15

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)

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
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 Patents granted certificates to correct previously published
Correction 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
items content
Errata Correct info about previously published material
Service by Note the cancel trademark registration within 30 days, pending
Publication appearance of a registrant, assignee, or legal representative
Registration to Names of individuals who have received provisional
Practice recognition to prepare and prosecute patent applications
1. the public regarding changes
Notices from the
2. updates in Patent rules and regulations and/or other
Solicitor's Office
patent-related items
Reclassification Lists newly established, deleted, or reclassified classes &
Reports 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

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

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


Trademark –
likelihood of Confuse
• Likelihood of Confusion is related to Similarity
of Marks <- hard to examine
Sound

Appearance

Commercial
impression

22

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

Goods

Services

Goods & Services

23

Trademark –
search system (TESS)

24

85025881 F&E


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 …


Reference
• 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
28

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