1. UW IP Management Certification Program Managing Patent Creation April 24, 2008 James Robarts Excelsior Bonifico Company james@ebcompany.com www.ebcompany.com james@ebcompany.com www.ebcompany.com

2. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company2 of 26 Tonight’s Goals  Provide yet another patent development overview Legal – patent requirements, USPTO use Business – collecting patent candidates & clarifying use Innovations – classifications, specification, and uses  Review need and techniques for prior art searches  Consider Apple’s IPod patent effort  Compare competing patent claim scopes  Offer take-home prior art search puzzle

3. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company3 of 26 An Almost Really Simplified Patent Process 1.Have a valuable innovation Identify a problem of economic value Specify a novel solution to problem 2.Document & witness the solution 3.Characterize/analyze how solution relates to Technical field – prior art Industry – application of solution Initial Invention DisclosureInitial Invention Disclosure 4.Prioritize solutions within a budget Product Definition Layers Product Definition Layers 5.Prepare patent disclosure and claims 6.File application w/USPTO, Wait until USPTO examinationFile Wait 7.Negotiate claims w/USPTO 8.Pay periodic fees 9.Mark your products

4. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company4 of 26 US Legal Bars  Actual invention Priority (invention vs. filing dates) Prior art  Patentable Innovation New Useful Unobvious  Completed Documentation Example of invention (specification & background) Inventors, Assignees, & Agents Technology relationships, such as USPTO classifications & prior art  Fees  Due Dates & Expiration USPTO.govUSPTO.gov

5. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company5 of 26  Throughout the 90’s Apple seeks to extend their brand to portable computing devices The Newton first offered in ’93, discontinued in ’99 after failure to capture significant share of emergent PDA market  Jobs narrows research focus to “information appliance” “…digital pocket Walkman”  2000 Creative Technology ships Zen portable music player  2001 Apple introduces the iPod iPod Case Study – Introduction

6. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company6 of 26 Case Study – Oct 2001 2000’01’02’03’04’05‘06 Zen Ship Creative Technology Apple iPod Ship 1 year

7. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company7 of 26 Patent Search Engines US US Patent & Trademark Office www.USPTO.govwww.USPTO.gov Thomson Delphion IP Network www.Delphion.comwww.Delphion.com Internet www.google.comwww.google.com International Europe http://www.espacenet.com/http://www.espacenet.com/ Japan http://www.ipdl.ncipi.go.jp/homepg_e.ipdlhttp://www.ipdl.ncipi.go.jp/homepg_e.ipdl World Intellectual Property Organization http://www.wipo.int/ipdl/en/ http://www.wipo.int/ipdl/en/ Lots of others, Internet search “patent searches”

8. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company8 of 26 Field Codes

9. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company9 of 26 Which USPTO Search Fields to Use? Most Useful Abstract (summary) /abst Classifications (type of technology) /ccl Dates (issue, application) /isd, /apd People & Companies /in, /an Patent references /ref Less Useful Disclosure (full specification), /spec Title, /ttl

10. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company10 of 26 Database Searches: Precision vs. Completeness  Precision – finding no more than you need  Completeness – not missing something relevant  Searching is a skill. Record your search terms, share expertise  Finding Creative Technology.ppt Finding Creative Technology.ppt

11. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company11 of 26 Case Study – July-Oct 2002 2000’01’02’03’04’05‘06 Product Ship Creative Technology Apple Product Ship Patent Publish Non-provisional Filed Provisional Filed 1 year 18 months

12. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company12 of 26 Interference & Diligence Inventor A Inventor B Invention Conception 2000’01’02’03’04’05‘06 Application Filed Application Published Application Filed 18 months Invention Conception? Inventor Diligence

13. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company13 of 26 Case Study – July-Oct 2002 2000’01’02’03’04’05‘06 Product Ship Creative Technology Apple Product Ship Patent Publish Non-provisional Filed Provisional Filed

14. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company14 of 26 Patent Parts Patent as Document TITLE Dates People: Inventors, Assignees, Attorneys, Examiners References to other patents (opt) Cited by (opt) Federally Sponsored R&D statement (opt) Serial numbers & status codes Patent as Invention Disclosure ABSTRACT BACKGROUND SUMMARY DESCRIPTION FIGURES Patent as Rights Published Claims File Wrapper Application Example – AppleApple Patent Example – Creative TechnologyCreative Technology

15. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company15 of 26 Claim Scope  Independents are the broadest  Dependents add specificity to Independents, making them narrow Consider when making Boolean searches…more AND terms means more precision & restricted hits

16. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company16 of 26 Claim Architecture Apple Application Creative Technology Extract

17. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company17 of 26 Case Study – Claim Comparison

18. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company18 of 26 Case Study – Claim Scope display 1 st order + select 2 nd order + display 2 nd order select 1 st order + display 2 nd order + select 2 nd order + display 3 rd order + access a track

19. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company19 of 26 Case Study – Comparing Wrappers Apple Creative Technology

20. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company20 of 26 Case Study – Current StatusCurrent Microsoft 2000’01’02’03’04’05‘06 Creative Technology Apple Patent Granted Patent Rejected Non-provisional Filed Product Ship Patent Publish Non-provisional Filed Provisional Filed Product Ship

21. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company21 of 26 Take Home Background – Patents for Match Making?  SEATTLE PI -- Feb 2, 2007 -- Yahoo has been accused in a lawsuit of infringing a U.S. patent on a way to match users' personality profiles. Spark Network Services (not Spark Networks) also named Match.com and eHarmony.com as defendantsSpark Network ServicesSpark Networks Match.comeHarmony.com

22. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company22 of 26 Take Home Assignment – Patent for E-mates? E-mates has a unique way of match making; a process that uses a “feedback profile”, as described in simulation background and next slide. 1.If this innovation had not yet been publicly disclosed, could they pursue a patent? 2.Should they? 3.What is the problem? What is the invention and its uses? 4.What prior art might be relevant? Share in class three examples of granted US patents that should be considered as prior art candidates. 5.Share in class one claim that might restrict LoveGenes operations.

23. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company23 of 26 E-mates Innovation “…the most reliable predictor of a successful relationship is to take an average score of the feedback from other subscribers who dated that person and later rated the person in a variety of categories, including physical attributes, personality, ethics, and personal interests. The more feedback provided about a subscriber by the dating party, the more accurate a profile that E-mates maintains. E- mates then matches the profiles of subscribers based on both their “feedback profile” and their personal preferences, giving more weight to the feedback profile unless the subscriber is new to E-mates.”

24. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company24 of 26 Check Competitors  Does EHarmony.com have any patents? an/eharmony$  6,735,568 Method and system for identifying people who are likely to have a successful relationship  Related to our operations?  Cited by others?

25. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company25 of 26 Referenced by 568

26. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company26 of 26 How to search http://www.uspto.gov/web/offices/ac/ido/ptdl/step7.htm http://www.lib.utexas.edu/engin/patent-tutorial/index.htm

27. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company27 of 26 Recap  Patent development overview Legal – patent requirements, USPTO use Business – collecting patent candidates & clarifying use Innovations – classifications, specification, and uses  Review need and techniques for prior art searches  Consider Apple’s IPod patent effort  Compare competing patent claim scopes  Offer take-home prior art search puzzle

28. UW IP Management Certification Program Patent Creation April 24, 2008 James Robarts Excelsior Bonifico Company james@ebcompany.com www.ebcompany.com james@ebcompany.com www.ebcompany.com

29. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company29 of 26 Invention Disclosure Form Problem – describe an existing business need, or clear technical barrier  External – user, not customer  Internal Previous Incomplete Solutions – prior art  How have others attempted to satisfy need?  How did each of these attempts fail?  Include only that which is known at time of invention New Complete Solution – technical specification & uses Short friendly name Brief description of how it solves problem – conceptual sketch desirable Minimum Necessary Highlight differences from previous solutions and benefits derived References/links to details Additional: project name, names of targeted products, potential product features, expected effort to implement $How might solution be used in other ways? Who/When  Co-inventor candidates  Disclosure dates  Witnesses or notebook references

30. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company30 of 26 US Patent Pendency

31. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company31 of 26 Patent Analysis Tools – Product Definition Layers  Benefits – why buy product?  Features – what does it do? (customer)  Functions – what does it do? (technically)  Technologies – how does it do it?  Rights – what do patent claims reserve?

32. Presented to U of WA IP Cert course April 24, 2008 Copyrights © Excelsior Bonifico Company32 of 26 Analysis Tools – Tech/Benefit Matrix