Category: Patent

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What Galileo’s Pendulum Clock Teaches About Inventing

HowWeGottoNow_SixInnovationsThatMadetheModernWorld

Fifty-eight years in the making, his slow hunch about the pendulum’s “magical property” had finally begun to take shape. The idea lay at the intersection point of multiple disciplines and interests: …Physics, astronomy, maritime navigation, and the daydreams of a college student: all these different strains converged in Galileo’s mind.

“After experiencing a desire to invent a particular thing, I may go on for months or years with the idea in the back of my head,” said Nikola Tesla. Tesla calls this the incubation period, which precedes direct effort on the invention. Science writer, Steve Johnson, calls it a slow hunch; an idea that comes into focus over a long time.

Johnson discusses several examples of how slow hunches develop in his excellent book, Where Good Ideas Come From and again is his most recent book How We Got to Now: Six Innovations That Made the Modern World. Johnson shows how innovation is most often a product of slow hunches and not eureka moments.

One of the six innovations that made the modern world is the clock for keeping accurate time. In Johnson’s discussion of time, he recounts the events and circumstances that led up to Galileo invention of the pendulum clock.

The story shows the invention of the pendulum clock was not a product of a eureka moment, but of Galileo’s experiences and cross-disciplinary studies over 58 years. Johnson starts with Galileo’s experience at university.

 Suspended from the ceiling is a collection of altar lamps. They are motionless now, but legend has it that in 1583, a nineteen-year-old student at the University of Pisa attended prayers at the cathedral and, while daydreaming in the pews, noticed one of the altar lamps swaying back and forth. While his companions dutifully recited the Nicene Creed around him, the student became almost hypnotized by the lamp’s regular motion. No matter how large the arc, the lamp appeared to take the same amount of time to swing back and forth. As the arc decreased in length, the speed of the lamp decreased as well. To confirm his observations, the student measured the lamp’s swing against the only reliable clock he could find: his own pulse.

Galileo’s daydreaming about time could have been influenced by the fact that his father was a music theorist and played the lute. Twenty years later, after becoming a professor of mathematics, Galileo decided to build a pendulum that would recreate what he had observed at Pisa.

He discovered that the time it takes a pendulum to swing is not dependent on the size of the arc or the mass of the object swinging, but only on the length of the string. “The marvelous property of the pendulum,” he wrote to fellow scientist Giovanni Battista Baliani, “is that it makes all its vibrations, large or small, in equal times.”

The then existing clocks did not keep accurate time. They could be off by tweenty minutes a day and had to be reset using a sundial. But no one needed accurate clocks in the sixteenth century for keeping daily schedules. The need for accurate time keeping arose from shipping navigation needs.

But sailors lacked any way to determine longitude at sea. Latitude you could gauge just by looking up at the sky. But before modern navigation technology, the only way to figure out a ship’s longitude involved two clocks. One clock was set to the exact time of your origin point (assuming you knew the longitude of that location). The other clock recorded the current time at your location at sea. The difference between the two times told your longitudinal position: every four minutes of difference translated to one degree of longitude, or sixty-eight miles at the equator.

The problem with this system was the accuracy of the clock at the point of origin.

With timekeeping technology losing or gaining up to twenty minutes a day, it was practically useless on day two of the journey. All across Europe, bounties were offered for anyone who could solve the problem of determining longitude at sea.

So, after years of working in various disciplines and influenced by the rise of a need for accurate time keeping, Galileo together with his son, drew up plans for the first pendulum clock.

Fifty-eight years in the making, his slow hunch about the pendulum’s “magical property” had finally begun to take shape. The idea lay at the intersection point of multiple disciplines and interests: Galileo’s memory of the altar lamp, his studies of motion and the moons of Jupiter, the rise of a global shipping industry, and its new demand for clocks that would be accurate to the second. Physics, astronomy, maritime navigation, and the daydreams of a college student: all these different strains converged in Galileo’s mind.

Owning to the improved accuracy of the pendulum clock it was in wide use by the end of the next century.

Galileo’s invention of the pendulum clock is just one example of many where the invention resulted from a long series of events and cross-disciplinary influences rather than a momentary flash of genius.

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Don’t Admit That: Problems in DIY Patent Application Drafting

“Mr. Morsa … admitted in the specification that the system as described in the patent ‘can be implemented by any programmer of ordinary skill . . . ‘ . . . Therefore, by using Mr. Morsa’s admissions, the Board simply held him to the statements he made in attempting to procure the patent.” – Federal Circuit Court of Appeals.

US20030093283A1_Fig3Properly drafting your own patent application can be difficult. Client-drafted DIY patent applications sometimes say too much, don’t say enough, or both. A client drafted patent application can say too little by failing to describe the invention with sufficient detail. And a client drafted patent application could say too much by making unnecessary admissions that can negatively impact the application.

In the case of In Re Morsa, No. 2015-1107 (Fed. Cir. 2015), the applicant wrote his own patent application and in doing so made admissions that contributed to the final refusal of his patent application. This case demonstrates how admissions in the patent application can negatively impact the prospect obtaining a patent.

Morsa’s Application

Morsa filed his patent application directed to a method and apparatus for furnishing benefits information. Claim 271 of his application provided:

A benefit information match mechanism comprising:

[1] storing a plurality of benefit registrations on at least one physical memory device;

[2] receiving via at least one data transmission device a benefit request from a benefit desiring seeker;

[3] resolving said benefit request against said benefit registrations to determine one or more matching said benefit registrations;

[4] automatically providing to at least one data receiving device benefit results for said benefit requesting seeker; wherein said match mechanism is operated at least in part via a computer compatible network.

The patent office cited a publication entitled Peter Martian Associates Press Release, dated September 27, 1999 (“PMA”) to show claim 271 was not new. Morsa argued that PMA did not provide enough detail to enable one skilled in this art to create Morsa’s claimed invention from the PMA without undue experimentation.

Prior Art

The Court maps disclosures from PMA to each of the elements of Morsa’s claim. The Court said with respect to each of the elements:

[1] [Regarding the first element] …the PMA reference describes the storage of “benefits and services that consumers receive from public and private agencies” along with the storage of “benefits services, health risks, or anything else an agency wishes to implement via its eligibility library.

[2] [The second element] correlates with the PMA’s statement that “consumers use the web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.”

[3] [The third element] maps onto the PMA’s use of the internet.

[4] [Regarding the fourth element] the PMA reference allows “consumers [to] use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to  implement via its eligibility library.”

Morsa’s Admissions in his Patent Application

Morsa argued that these high level statements in PMA did not provide enough detail to enable one create Morsa’s claimed invention. The Patent Office solved this problem be pointing to admissions in Morsa’s application (“the specification”) as to what one skilled in the art would have known at the time of the invention.

The court noted that Morsa’s specification admitted that:

  1. central processing units and memories were “well known to those skilled in the art,”
  2. central processing units and memories were “used in conventional ways to process requests for benefit information in accordance with stored instructions,”
  3. the system as described in the patent application “can be implemented by any programmer of ordinary skill in the art using commercially available development tools . . . ,” and
  4. “search routines for accomplishing this purpose are well within the knowledge of those of ordinary skill in the art.”

Therefore, based on those admissions, the Court concluded that one of ordinary skill in the art was capable of programming the invention based on the disclosure in the PMA reference.

In other words, the Court used Morsa’s admissions in the application to “fill in the gaps” in PMA as to what one skilled in the art would have know how to do related to Morsa’s invention.

Avoid Admissions in Application

If Morsa had not made such admissions, the Patent Office would have need to work harder to find reference that described the what one skilled in the art would have known at the time.

It probably would not have been too hard for the Patent Office to find a reference that described the use of databases and searching routines for use in an obviousness rejection. And, it possible that even if Morsa had not made the admissions in his application that his application still would have been refused.

Nonetheless, you do not what to make it easy for the patent office to refuse your patent application. Admitting that portions of an invention are “within the knowledge of those of ordinary skill in the art” or “well known to those skilled in the art” can be a problem, as shown in the Morsa case.

The reason Morsa made those admissions was so that he did not have to describe details of the items referenced as known, e.g. CPUs, search routines, etc. It’s a short cut.

But, it is better to describe the details of missing item or process or otherwise formulate statements without admitting components of the invention or the processes of making those components are “known by one skilled in the art.”

There maybe some instances where it would be acceptable to admit that a common component of the invention could be made by methods known by one skilled in the art. However, doing so is a double edge sword that can hurt you if not done properly. Given the potential downsides it is safer generally to avoid making such admissions.

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Overcoming the Difficulty of Recognizing Good Ideas

Knowledge formation, even when theoretical, takes time, some boredom, and the freedom that comes from having another occupation, therefore allowing one to escape the journalistic-style pressure of modern publish-and-perish academia… –Nassim Talab.

Antifragile“The future is already here – it’s just not evenly distributed” is a quote often attributed to William Gibson. Nassiam Taleb, the author of Black Swan, and more recently Antifragile: Things That Gain from Disorder, asserts that in many cases you cannot predict the future. We have a hard time recognizing good ideas and implementing them. Having time and cultivating a capacity for boredom, as explained below, can contribute to one’s ability to recognize good ideas.

When a good idea succeeds, it can have a huge upside–a much greater upside than downside. Taleb says that anything that has more upside than downside from random events is antifragile. Further, antifragility describes “things that benefit from shocks; [] thrive and grow when exposed to volatility, randomness, disorder, and stressors and love adventure, risk, and uncertainty.” Inventing can be an antifragile activity.

The Difficulty of Recognizing Good Ideas

Taleb points out we have a difficult time recognizing opportunities that are staring us in the face. This is the same vein as the Gibson quote above, which was repeated by Chris Anderson, editor of Wired Magazine. Taleb says:

It struck me how lacking in imagination we are: we had been putting out suitcase on top of a cart with wheels, but nobody thought of putting tiny wheels directly under the suitcase…Can you imagine that it took close to six thousand years between the invention of the wheel (by, we assume, the Mesopotamians) and this brilliant implementation (by some luggage maker in a drab industrial suburb)? And billions of hours spent by travelers like myself schlepping luggage through corridors full of rude customs officers. Worse, this took place three decades or so after we put a man on the moon….Indeed, though [the wheeled suitcase was] extremely consequential, we are talking about something trivial: a very simple technology.

…

This tells us something about the way we map the future. We humans lack imagination, to the point of not even knowing what tomorrow’s important things look like.

Although not the case with the wheeled suit case, sometimes the difficulty in recognizing good ideas is–as Peter Thiel notes–they often look like bad ideas.

As Steven Johnson asserted in his book Where Good Ideas Come From: The Natural History of Innovation, we need to cultivate opportunities where ideas can collide unpredictably. Taleb too asserts that we need randomness to stumble upon good ideas:

We are managed by small (or large) accidental changes, more accidental than we admit. We talk big but hardly have any imagination, except for a few visionaries who seem to recognize the optionality of things. We need some randomness to help us out–with a double dose of antifragility.

Implementation Does Not Always Follow Quickly From Invention

Even when you do stumble upon a good idea and develop it into an invention, there’s still the difficult road to implementation and commercial success. This is, in part, why there are many many uncommercialized inventions described in patents and patent applications, which you can’t find on the market.

…Implementation does not necessarily proceed from invention. It too, requires luck and circumstances. The history of medicine is littered with the strange sequence of discovery of a cure followed, much later, by the implementation–as if the two were completely separate ventures, the second harder, much harder, than the first. Just taking something to market requires struggling against a collection of naysayers, administrators, empty suits, formalists, mountains of details that invite you to drown, and one’s own discouraged mood on occasion. In other words, to identify the option (again, there is this option blindness). This is where all you need is the wisdom to realize what you have on your hands.

For there is a category of things that we can call half-invented, and taking the half-invented into the invented is often the real breakthrough. Sometimes you need a visionary to figure out what to do with a discovery, a vision that he and only he can have. For instance, take the computer mouse, or what is call the graphical interface: it took Steve Jobs to put it on your desk, then laptop–only he had a vision of the dialectic between images and humans–later adding sound to a trilectic. The things, as they say, that are “staring at us.”

The difficulty of recognizing good ideas, and the uncertainty of proceeding with an idea, contributes to huge upsides for those that do.

The Need for Time to Allow Ideas to Percolate: The Clergy and Hobbyists

Chris Dixon said, “What the smartest people do on the weekends is what everyone else will do during the week in ten years.” Taleb makes a similar point.  Many significant inventions were developed by hobbyist and the English clergy. They had ample time to let ideas percolate and collide–in other words, to invent.

Knowledge formation, even when theoretical, takes time, some boredom, and the freedom that comes from having another occupation, therefore allowing one to escape the journalistic-style pressure of modern publish-and-perish academia to produce cosmetic knowledge…

There were two main sources of technical knowledge and innovation in the nineteenth and early twentieth centuries: the hobbyist and the English rector, both of whom were generally in barbell situations.

An extraordinary proportion of work came out of the rector, the English parish priest with no worries, erudition, a large or at least comfortable house, domestic help, a reliable supply of tea and scones with clotted cream, and an abundance of free time. And, of course, optionality. The Reverends Thomas Bayes (as in Bayesian probability) and Thomas Malthus (Malthusian overpopulation) are the most famous. But there are many more surprises, cataloged in Bill Bryson’s Home, in which the author found ten times more vicars and clergymen leaving recorded traces for posterity than scientists, physicists, economists, and even inventors. In addition to the previous two giants, I randomly list contributions by country clergymen: Edmund Cartwright invented the power loom, contributing to the Industrial Revolution; Rev. Jack Russell bred the terrier; Rev. William Buckland was the first authority on dinosaurs; Rev. William Greenwell invented modern archaeology; Rev. Octavius Pickard-Cambridge was the foremost authority on spiders; Rev. George Garrett invented the submarine; Rev. Gilbert White was the most esteemed naturalist of his day; Rev. M. J. Berkeley was the top expert on fungi; Rev. John Michell helped discover Uranus; and many more.

…

The Industrial Revolution, for a refresher, came from “technologists building technology,” or what he [Terence Kealey] calls “hobby science.” Take again the steam engine, the one artifact that more than anything else embodies the Industrial Revolution. As we saw, we had a blueprint of how to build it from Hero of Alexandria. Yet the theory didn’t interest anyone for about two millennia. So practice and rediscovery had to be the cause of the interest in Hero’s blueprint, not the other way around.

Having free time and cultivating a capacity for boredom allows ideas to percolate, even subconsciously. This appears to enhance the ability to recognize and implement good ideas and to possibly profit from the antifragile nature of inventing.

Antifragle is a thought provoking book in its entirety with possible wide ranging applicability.

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Computer Based Method of Determining Optimal Product Price Not Patent Eligible

USPatent7970713OIP Technologies sued Amazon alleging that Amazon infringed OIP’s patent 7,970,713 directed to a computer based method of automatically determining the optimal price for a product. The court of appeals determined that the claimed method was not patent eligible as an abstract idea under 35 USC 101 in OIP Technologies v. Amazon, No. 2012-1696 (Fed. Cir. 2015).

The court summarized the limitations of claims 1 of the ‘713 patent as: “(1) testing a plurality of prices; (2) gathering statistics generated about how customers reacted to the offers testing the prices; (3) using that data to estimate outcomes (i.e. mapping the demand curve over time for a given product); and (4) automatically selecting and offering a new price based on the estimated outcome.”

Following the two step test from Alice v. CLS Bank, 134 S. Ct. 2347 (2014), the court found under step one that the claims were directed to the abstract idea of offer-based price optimization. The court summarized a problem that the method of the ‘713 patent aimed to solve:

The ’713 patent explains that traditionally merchandisers manually determine prices based on their qualitative knowledge of the items, pricing experience, and other business policies. In setting the price of a particular good, the merchandiser estimates the shape of a demand curve for a particular product based on, for example, the good itself, the brand strength, market conditions, seasons, and past sales. . . The ’713 patent states that a problem with this approach is that the merchandiser is slow to react to changing market conditions, resulting in an imperfect pricing model where the merchandiser often is not charging an optimal price that maximizes profit.

Accordingly, the ’713 patent teaches a price optimization method that “help[s] vendors automatically reach better pricing decisions through automatic estimation and measurement of actual demand to select prices.”

The court found that the offer-based price optimization of the ‘713 patent was similar to other ‘fundamental economic concepts” found to by abstract ideas and then cited the following cases: Alice, 134 S. Ct. at 2357 (intermediated settlement); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (risk hedging); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising as an exchange or currency); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (data collection); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating tasks in an insurance organization).

In the second step of the Alice test, the court found that the other elements of the claims did not transform the abstract idea of offer-based price optimization into a patentable method. The court found that the additional elements in the claims merely recited well-understood, routine conventional activities either by requiring conventional computer activities or routine data-gathering steps.

The court concluded that “[a]t best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.

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Non-invasive Prenatal Genetic Testing Method Not Patent Eligible

NonInvasivePrenatalDiagnosisPatentToday test results from a pregnant mother’s blood can detect characteristics of the fetus, such as genetic defects or gender. The method of detecting such characteristics was found non patent eligible by the Court of Appeals in Ariosa Diagnostics v. Sequenom, Inc., Nos. 2014-1139, 2014-1144 (Fed. Cir. 2015).

In 1996, Drs. Dennis Lo and James Wainscoat discovered cell-free fetal DNA (“cffDNA”) in maternal plasma and serum. This plasma and serum was previously discarded as waste by researchers. cffDNA is non-cellular fetal DNA that circulates freely in the blood stream of a pregnant woman. Drs. Lo and Wainscoat used known laboratory techniques to detect the cffDNA and determine fetal characteristics, such as genetic defects or  gender. U.S. Patent 6,258,540, titled “Non-invasive prenatal diagnosis” was granted on this method. But the Court of Appeals determined that the claimed method was not patent eligible.

Claim 1 of the patent provides:

1. A method for detecting a paternally inherited
nucleic acid of fetal origin performed on a maternal
serum or plasma sample from a pregnant female,
which method comprises

amplifying a paternally inherited nucleic acid
from the serum or plasma sample and

detecting the presence of a paternally inherited
nucleic acid of fetal origin in the sample.

According to the Supreme Court in Mayo v. Prometheus,132 S.Ct. 1289 (2012) to determine whether a patent is directed to ineligible natural phenomena, (1) first its is determined whether the claims at issue are directed to a patent-inelibible concept, and (2) if so, it is determined whether the additional elements of the claim transform the nature of the claim into a patent-eligible application of the natural phenomena. The second step is the search for the inventive concept “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”

It was undisputed that the existence of cffDNA in maternal blood is a natural phenomenon. So the question under step two of the Mayo test was whether the additional steps transformed the claim into a patentable application of the natural phenomenon.

The court determined that amplifying and detecting the cffDNA were well-understood, routine, and conventional activities in 1997. Those activities simply were not previously applied to maternal blood. Since the steps of amplifying and detecting were well know the only new subject matter was the discovery of the presence of cffDNA in the maternal plasma or serum.

As a result, the method patent was found not patent eligible as a natural phenomena under 35 USC 101.

The court recognized that the testing method in U.S. Patent 6,258,540 was a positive and valuable contribution to science and medicine. But that alone was not sufficient to make the method patentable under the Supreme Court’s precedent, which provides “[g]roundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.”

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Do I Need a Patent to Sell My Product or Service?

No. You are not required to obtain a patent in order to sell a product or service embodying your invention. Many products and services are sold that are not patented.

A U.S. patent provides the right to stop others from making marketing, selling, or importing your invention in the United States. Therefore a patent may provide you a competitive edge against your competitors in the marketplace. But, a patent is not a grant of permission to make your product or provide your service. A patent will not protect you from claims of infringement by others.

For example, assume that your product is A+B and you obtain a patent on A+B. Then John who owned a prior patent on invention “A” sends you a letter alleging that your product A+B infringes his patent for A because your product includes “A.” You cannot use your patent on A+B as a defense. This is true because patents can be used offensively (to stop others from making, selling, etc. your invention) not defensively (to prevent others from claiming your product infringes their prior patent). However there may be other defenses that you could assert, such as that the patent on A is invalid.

In order to be sure that your product or service will not infringe another party’s prior patent, you need a clearance or freedom to operate opinion. In order to prevent others from copying and selling your invention you need a patent or you need to pursue other non-patent options. However, there is no requirement that you obtain a patent in order to sell a product or provide service. You may choose to proceed without a patent and compete in the marketplace.

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How to Patent Search

PatentSearchCan I patent this invention? One of the first steps in the patent process is to determine whether you can obtain a patent on the invention. The heavy lifting of this determination is a patentability search, also known as a patent novelty search. The purpose of the search is to give you information on whether your invention is new and therefore patentable. Can you do that search yourself?

Searching Yourself v. Professional Searching

Yes, but patent searching is an art that you get better at with repeated practice. Therefore, a professional patent searcher is likely to uncover results that you did not find given the professional searcher’s experience, access to search tools, and knowledge of searching techniques.

However, you may like to perform patent searching on your own because you could identify relevant prior art references, which if such references disclose all the features of your invention, would enable you to avoid the cost of hiring a professional patent searcher.

Yet, before concluding your invention is not patentable based on the results of your search, you should consult a patent attorney for advice as to whether you could obtain patent protection even in light of the prior art references you found. In some cases, results that appear to block your ability to obtain a patent can be overcome with the appropriate patent strategy and patent drafting approach.

Always Relevant Results

There is relevant prior art for almost every invention. Therefore, it is extremely unlikely (or impossible?) that a patent search will return no relevant prior art references. So when someone says they searched the patent office records and there is nothing like the invention, I know that there is more than nothing relevant. The issue is usually (1) that the search scope was not broad enough, or (2) the search simply did not locate the relevant results. In the first case, the search scope is usually not broad enough because the inventor/client does not realized the scope of relevant inventions. For example, if the invention is related to car horns, the search should not be limited to only car horns, but should extend to any vehicle horn, such as a truck horn, a boat/ship horn, tractor horns, motorcycle horns, possibly a bicycle horns or other non-motorized vehicles, possibly stationary horns, etc.

So, if your search uncovers nothing relevant, then you know you need to keep searching or hire a professional patent searcher.

To gain an understanding the search process we can look to the manual that the Patent Examiners follow when examining patent applications, which is titled, the Manual of Patent Examining Procedure (MPEP). The MPEP provides the high level search approach: “(A) identifying the field of search; (B) selecting the proper tool(s) to perform the search; and (C) determining the appropriate search strategy for each search tool selected.” MPEP 904.02.

Problems With Text-Only Searching

That sounds pretty straight forward.  The devil is in the details. Before getting to a more specific search strategy, let’s look at the warnings that the MPEP provides about text searching.

The MPEP warns against relying on text searching alone:

Text search can be powerful, especially where the art includes well-established terminology and the search need can be expressed with reasonable accuracy in textual terms. However, it is rare that a text search alone will constitute a thorough search of patent documents. Some combination of text search with other criteria, in particular classification, would be a normal expectation in most technologies.

[MPEP 904.02 (emphasis added)].

Text searching is keyword searching. Text searching is when you enter words into a search engine and the engine returns results having those words.

The problem with text searching is that a patent attorney can act as a lexicographer, that is the patent drafter can make up words, assign words meanings other than their normal meaning, and can use terms other than the common terms for a given part, component, or feature of the invention. This is what makes text-only searching problematic.

The MPEP discusses the difficulty in choosing the right textual terms to search for a given invention:

Examiners will recognize that it is sometimes difficult to express search needs accurately in textual terms. This occurs often, though not exclusively, in mechanical arts where, for example, spatial relationships or shapes of mechanical components constitute important aspects of the claimed invention. In such situations, text searching can still be useful by employing broader text terms, with or without classification parameters.

[MPEP 904.02 (emphasis added)].

For example, U.S. Patent 5,185,953 is for a mouse trap. But the title of that patent is not “mouse trap,” but instead is “rodent extermination device.” Also, U.S. Patent 2,415,012 is for the Slinky toy. But that patent does not use the term “Slinky.” And, it’s title is “Toy and Process of Use.”

The MPEP provides one solution to the text-only search problem and that is a classification search:

The traditional method of browsing all patent documents in one or more classifications will continue to be an important part of the search strategy when it is difficult to express search needs in textual terms.

[MPEP 904.02 ].

That’s right, for some inventions, it may be necessary or advisable to browse (e.g. look at) all patents within one or more classes. Looking at each patent within a classification avoids the lexicographer problem explained above, because browsing the drawings or other content of a patent document can identify relevant patents that might not be found by text searching.

It can be tedious and time consuming to browse all patents within one or more classes. This is especially true if you don’t have access to search tools that allow quickly viewing each patent and moving to the next. Regardless, depending on the type of invention, classification searching is likely necessary.

Patent Searching Framework

While classification searching is often needed, it can be difficult for a novice to be as effective searching the classification system as a professional searcher that has searched the classification system numerous times and has a familiarity with it.

Therefore, we can start with text searching to find relevant classes to look to. Alternatively, you can browse or search the classification scheme for relevant classes (skipping to step 8).

I suggest the following framework for searching:

  1. Brainstorm keywords describing the invention
  2. Perform keyword searching to identify some relevant patents
  3. Identify new keywords in found relevant patents, search with new keywords
  4. Review backward looking cited references and forward looking references
  5. Note the classes of the relevant patents
  6. Review class definitions of noted classes
  7. Review adjacent classes to the noted classes
  8. Search and browse CPC scheme for additional relevant classes
  9. Perform classification searches
  10. Optionally narrow classification search by keyword
  11. Keep searching

I’ll explain each step in detail.

1. Brainstorm keywords describing the invention

Create a list of keywords that describe the invention, including important features of the invention. From those keywords, look up synonyms to each a thesaurus. The identify search groupings of keywords for search queries.

Here are questions suggested by the USPTO to assist in developing a list of relevant keywords:

  1. What does the invention do? (Essential function of the invention)
  2. What is the end result? (Essential Effect or basic product resulting from the invention)
  3. What is it made of? (Physical structure and components)
  4. What is it used for? (Intended use)

Let’s say you wanted to find patents directed to a method of purchasing a product from an online store with one click. Amazon obtained such a patent, U.S. Patent 5,960,411 (“the ‘411 patent”) is popularly known as the Amazon one-click patent. If you search Google patents for “one click order” the ‘411 patent will be the first result. However, this is likely only because this is a famous patent that received a lot of media attention.

If this patent was not famous, you probably would not find it by searching “one click order.” Why? because nowhere in the patent does it say “one click.”  Instead it provides, for example, “The client system … displays an indication of an action (e.g., a single action such as clicking a mouse button) that a purchaser is to perform to order the identified item.”

Synonyms for “click” in this circumstance include action, act, selection, process, motion, operation, movement, activity, etc. Synonyms for single include one, only one, etc.

2. Perform keyword searching to identify some relevant patents

Now you can take those search terms and combine them to perform various searches in the patent databases.

What are the patent databases? First are the USPTO Patent and Published Patent Application databases. You can perform word searching via the web in those databases. However, patents from 1790 to 1975 are not text searchable. So text searching will not show any results for this time period. This is likely not a problem for newer technologies. However, many inventions have relevant prior art from these time periods. You can review the search options at the USPTO help page.

Another search tool is Free Patents Online (FPO), which is relatively fast. The patent documents are hyperlinked so you can navigate from one patent to the next rather quickly.

The problem with FPO, and with the USPTO tools, is that you can not quickly view the drawings of a patent. FPO and the USPTO do not show you thumbnail images of the drawings when you first get to the detail page for a particular patent. In FPO you have to click on the view PDF link and wait for the PDF to load in your browser. The same is true for the USPTO databases.

Google Patents is better at quickly showing images of the patents. The result list shows thumbnail images of the first page of each patent. When you select the patent, the patent detail page shows thumbnails of all the drawings. When looking to browse images, Google Patents makes the job easier than the USPTO or FPO.

Some have noted that Google’s patent database has holes, in that its missing patents know to exist. So, you should not rely exclusively on Google Patents for all of your searching. In general, it is good to use a mix of tools when patent searching for completeness.

3. Identify new keywords in relevant patents, search with new keywords

When you find a relevant patent document, review it to see if it uses terms related to your invention that you did not think of initially. Add those new terms to your search keywords and preform additional searching with those new terms.

4. Review backward looking cited references and forward looking references

U.S. patents and published patent applications (and many foreign patent documents) cite to other prior patents, patent applications, and publications. These backward looking citations to patent documents (also know as “references cited”) are made by the patent applicant or the patent examiner during the patent application process. Either the patent applicant or the patent examiner believed that the references cited were related to some aspect of the invention. Therefore, if you find a relevant patent, you should look to the references cited, which may also be relevant. Sometimes these references cited will be more relevant to your invention.

Below is a excerpt of the references cited from the front page of the ‘411 patent.

ReferencesCited

If the ‘411 patent was a relevant patent, you’d want to look at some or all of these references cited. The USPTO, Google patents, and FPO provide hyperlinks to each of the US patent documents cited. However, the USPTO does not provide the title for each reference cited. The title can be helpful in determining whether the reference is relevant and worth investigating.

Here is a portion of the cited references from Google’s webpage for the ‘411 patent:

GoogleReferencesCited

Here is a portion of the cited references from USPTO’s webpage for the ‘411 patent:

USPTOCitedReferences

Not only can you find backward looking references cited, but you can also find forward looking references. Forward looking references are later patent documents that cite back to the patent, e.g. back to the ‘411 patent. A references is a forward looking reference in that it is a reference to a later patent document. The printed patent will not show forward looking reference because they are unknown at the time that the patent is granted. Forward looking references occur overtime as later patents cite back to an issued patent or a published patent application. The USPTO and Google provide forward looking citations, but presently FPO does not.

The forward looking references are accessible at the USPTO website by going to the patent’s webpage and clicking on the “[Referenced By]” link (shown in the screenshot above).  The forward looking references are provided in the “REFERENCED BY” section of Google’s webpage for the ‘411 patent.

The backward looking references cited in the patent and the forward looking references that cite back to the patent document from later patent documents are important sources for finding other relevant patent documents.

5. Note the classes of the relevant patents

The USPTO has a subject matter classification system, where the USPTO classifies patents based on the subject matter of the patent. The classification system is an arrangement of hierarchical categories used to organize patents and patent applications by their characteristic. Therefore you can browse or search patent and published patent applications within a particular subject matter classification. The patent examiner specifies one and usually more than one class that the subject matter of the patent document pertains to.

This is the classification section of the ‘411 patent:

Patent_Classificiation

The international class is specified at G06F 17/60. G06F is the Electrical Digital Data Processing class. However, classes change over time, so at the time of this post the 17/60 subclass no longer exists. To find the current class that corresponds to the 17/60 class you can goto the USPTO webpage for the ‘411 patent. At the time of this writing, the USPTO webpage for the ‘411 patent shows the following current classifications:

USTPO_Web_Classification_US5960411

The current international class for the ‘411 patent is G06Q 10/00.

There are at least three classification schemes (1) the US patent classification scheme, (2) the international patent classification scheme, and (3) the cooperative patent classification scheme.

The USPTO switched from using the US classification scheme to cooperative patent classification (CPC) scheme. In 2015, the USPTO stopped classifying patents in the US Classification system.

This post will focus on CPC based searching. The current CPC class of the ‘411 patent is G06Q (Data Processing Systems or Methods) and the subclass is 10/087 (Inventory or stock management, e.g. order filling, procurement, balancing against orders).

6. Review class definitions of noted classes

Beyond the primary class/subclass of G06Q 10/087 of the ‘411 patent, you should browse the class/subclass titles and definitions for each of the CPC classes listed. You can find the class/subclass titles and definitions at the Classification search page.

Not only does a one-click purchase involve “order filling” in subclass 10/087, but as noted above it may involve the following additional subclasses:

  • G06Q 20/04 – Payment circuits
  • G06Q 20/12 – Payment Architectures specially adapted for electronic shopping systems
  • G06Q 30/04 – Billing or invoicing
  • G06Q 30/06 – Buying, selling or leasing transactions
  • G06Q 30/0633 – Buying, selling or leasing transactions, electronic shopping: lists, e.g. purchase orders, compilation or processing
  • G06Q 30/0635 – Buying, selling or leasing transactions, electronic shopping: Processing of requisition or of purchase orders
  • G06Q 30/0635 – Buying, selling or leasing transactions, electronic shopping: Shopping interfaces
  • Y10 715/962 – Data processing: presentation processing of document, operator interface processing, and screen saver display processing: Operator interface for marketing or sales

Additionally the patent office considered relevant the class G07F 11/00 for “Coin-freed [payment activated] apparatus for dispensing, or the like, discrete articles:where the dispenser is part of a centrally controlled network of dispensers.” You might not immediately think of dispensing devices as relevant to a search for one-click online purchases, but they are related in that it is possible that a purchaser could receive a product with one action in both cases.

Class G07F 11/00 is an example of a class that you might not have thought of unless you reviewed the classes listed on relevant patents you find in your search.

You should make a list of relevant classes for classification searching. This list will be expanded and refined in steps 7 and 8 below.

7. Review adjacent classes to the noted classes

Looking to the CPC schedule/scheme you can view the classes that are adjacent to those you have identified in the prior steps. It is possible that adjacent classes will be as relevant or more relevant than the classes you have already identified. This is an excerpt of the class scheme adjacent G06Q 10/087.

AdjacentPatentClasses

 

8. Search and browse CPC scheme for additional relevant classes

Next, to be sure that you find all the the potentially relevant classes you should keyword search the CPC Scheme and browse the CPC Scheme.

To search the CPC scheme, goto www.uspto.gov and enter keywords into the search box in the upper right corner. This is what the search box currently looks like:

CPC_Keyword_SearchingStart each search with “CPC scheme” followed by your search terms, in this case “online purchasing.” The G06Q class is the first class in the result list, which matches the class G06Q that we found in the ‘411 patent. However, do not stop there, search with other keywords and combinations of keywords to find relevant classes.

9. Perform classification searches

Goto the patent search engines and search for patents and patent applications in the classes that you identified above.

At the USPTO you can search for all patents in class G06Q 10/087 by typing “cpc/G06Q10/087” on the advanced patent search page and all published patent applications in that class by performing the same search on the manual patent application search page. The search syntax is CPC/ followed by the class and subclass without any spaces.

Google Patents advanced search page provides a field for Cooperative Classification searching where you can enter the class/subclass without any spaces “G06Q10/087”. At the time of this writing, it does not appear that FPO has a field for searching the CPC.

10. Optionally narrow classification searches by keywords

At the time of this post, USPTO records show 5,046 patents in class G06Q10/087. In some cases, you may have to browse each and every one of those patents. In some cases, you may be able to refine your search by adding keywords to search within that class to the reduce result set. However, narrowing the search results by keyword runs into the keyword searching problem explained above.

11. Keep searching

One of the the hardest things about patent searching is knowing when you are done. Is it that no problematic patent document exists related to your invention or does it exist and you failed to find it?

There’s no universal answer to the question. Knowing whether a search is complete is usually a product of knowledge that you’ve covered all the relevant patent classes combined with knowledge borne by experience based knowledge of where you should be searching.

This post should give you a framework for patent searching. Then you can take those results to a patent professional for an opinion on how they impact your ability to obtain a patent.

The goal of a do-it-yourself patent search is to find patent documents that could present an obstacle to your effort to obtain a patent. If you do identify a potentially problematic patent document and a patent attorney confirms it is a substantial obstacle to obtaining a patent, you might  save money by doing your own patent search.

However, as you can see above patent searching is not easy. The ability to perform a complete patent search is a product of experience, which there is no first-time DIY substitute for. Therefore, in the case you do not find any patent documents that are close to your invention, your next step is to have a professional patent search performed.

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Is the Invention before Its Time? What iPods, Biology, and Computers Teach about Inventing in the Adjacent Possible

WhereGoodIdeasComeFromIn 1979, Kane Kramer invented a portable digital music player. He sought patents in numerous countries, including the United States where he was granted US Patent No. 4,667,088.

The Kramer portable digital music player used memory cards, the size of a standard credit card, which were each capable of holding 3.5 minutes of music (i.e. one song).  A record shop could store blank cards and load those cards on-demand from a digital music data store in the music shop at the time of sale.

A media outlet asserts that Kramer was the “inventor behind the iPod.” That statement probably goes too far in characterizing a reference that Apple made to Kramer’s patent and invention as prior art in a patent lawsuit.

Regardless, Kramer’s device was an early portable digital music player. The problem for Kramer was that his device did not become a commercial success. And later his patents lapsed because he was unable to pay the patent maintenance fees.

While we don’t know why Kramer’s device was not a commercial success, it might be that in 1979 the Internet did not exist that made electronic distribution of music easy–you don’t have to go to the physical music store. It might be that the electronic storage capacity of the memory card for the device could only hold one song. It might be that the elements helpful for commercial success did not exist in the 1980s when Kramer attempted to commercialize the invention.

Maybe Kramer’s music player was not within “the adjacent possible.” Stated another way, maybe it was before its time.

Steven Johnson discusses “the adjacent possible” in his book, Where Good Ideas Come From. The adjacent possible provides an outer boundary to how advanced your invention can be from the current state of the art. It is one factor to consider when evaluating the possible commercial success of your invention.

The Adjacent Possible from Evolutionary Biology

Johnson notes that scientist Stuart Kauffman coined the term “the adjacent possible” to describe the set of first-order combinations of molecules that were possible given the composition of the earth’s environment before life emerged:

The lifeless earth was dominated by a handful of basic molecules: ammonia, methane, water, carbon dioxide, a smattering of amino acids and other simple organic compounds… Think of all those initial molecules, and then imagine all the potential new combinations that they could form spontaneously… trigger all those combinations [and] you would end up with most of the building blocks of life: the proteins that form the boundaries of cells; sugar molecules crucial to the nucleic acids of our DNA.

…

But you would not be able to trigger chemical reactions that would build a mosquito, or a sunflower, or a human brain… The atomic elements that make up a sunflower are the very same ones available on earth before the emergency of life, but you can’t spontaneously create a sunflower in that environment, because it relies on a whole series of subsequent innovations that wouldn’t evolve on earth for billions of years: chloroplasts to capture the sun’s energy, vascular tissues to circulate resources though the plant, DNA molecules to pass on sunflower building instructions to the next generation.”

On the pre-life earth formaldehyde was within the adjacent possible but more complex organisms were not. The more complex organisms required intermediate building blocks that had not yet come into existence.

The Difference Engine and The Analytical Engine

The adjacent possible is not only applicable within evolutionary biology, but applies to human-made inventions.

Johnson notes two inventions of Charles Babbage–the Difference Engine and the Analytical Engine–to show when an invention is within the adjacent possible and when it is not. Babbage was a nineteenth-century British inventor, now known as the father of modern computing.

The Difference Engine was advanced mechanical calculator described as a very complex “fifteen-ton contraption, with over 25,000 mechanical parts, designed to calculate polynomial functions that were essential to creating the trigonometric tables crucial to navigation.” While Babbage did not build the Difference Engine during his lifetime, the Difference Engine was within the adjacent possible of the Victorian technology. Many improvements occurred within the field mechanical calculation during that time based on Babbage’s architecture, according to Johnson.

On the other hand, Babbage’s Analytical Engine was not within the adjacent possible. On paper, the Analytical Engine was the world’s first programmable computer. But it was so complicated most of it never got past the blueprint stage:

Babbage’s design for the engine computer anticipated the basic structure of all contemporary computers: “programs” were to be inputted via punch cards…; instructions and data were captured in a “store,” the equivalent of what were now call random access memory, or RAM; and calculations were executed via a system that Babbage called “the mill.” uniting industrial-era language to describe what were now call the central processing unit, or CPU.

Babbage had most of the system sketched out by 1837, but the first true computer to use this programmable architecture didn’t appear for more that a hundred years. While the Difference Engine engendered an immediate series of refinements and practical applications, the Analytical Engine effectively disappeared from the map. Many of the pioneering insights that Babbage had hit upon in 1830s had to be independently rediscovered by the visionaries of the World War II-era computer science.

Implementing the Analytical Engine with mechanical gears and switches would have been extremely complex and difficult to maintenance according to Johnson. On top of that it would have been slow. For the Analytical Engine to work or work well, the logic needed to be implemented with electronics and not mechanical gears. Therefore, the Analytical  Engine was not within the adjacent possible in the 1837.

YouTube

Johnson leaves us with one more modern example: Youtube. Johnson notes that if Youtube was created 10 years earlier in 1995 it would have failed. This is because in 1995 most web users were on slow dial-up connections and it could take an hour to download a standard Youtube clip. In 1995, Youtube’s innovation was not within the adjacent possible, but ten years later, with broadband Internet and Adobe’s Flash technology, it was.

Invention Evaluation Factor: Is it Within the Adjacent Possible?

One question you should answer when evaluating your invention is whether the invention is within the adjacent possible.

It is not enough to consider whether it is technically possible to create your invention. The Kramer portable digital music player was technically possible to create at the time. But the underlying infrastructure–the lack of the Internet–and the memory storage capacity available at the time could have constrained its ability to be a commercial success.

At least for human-made inventions, practical application of the adjacent possible principle must consider not only whether it is technically possible to manufacture/make, but whether the infrastructure and other elements helpful for commercial success exist at the time.

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How to Broaden Design Patent Protection with Broken Lines: Apple v Samsung

ApplePatentD593087_SamsungGalaxyS4G

The Samsung Galaxy S 4G smartphone on the right has a different back shape and lacks a circular home button on the front as compared to the iPhone in Figures 19 and 24 of U.S. Patent No. D593087 (“the ‘087 patent”), shown on the left. But a jury determined that the Galaxy infringed the ‘087 patent in the case of Apple v. Samsung, No. 200-cv-01846 (N.D. Cal. 2011). Did the jury ignore those different elements of the Galaxy phone?

Yes. And they were right to ignore them.

Apple drafted the ‘087 patent in a way that requires that the differences in the back shape and the home button be ignored. Apple did that by providing those features in broken lines.

The solid lines indicate the part of design of the iPhone that Apple claimed, which include rounded rectangular bezel and the phone speaker opening on the front face.

Design Patent Infringement

If Apple would have shown all sides and all features of the iPhone in solid lines in the ‘087 patent, then it is possible that the jury would have determined that the Galaxy did not infringe the ‘087 patent.

The ordinary observer test is used to determine design patent infringement. As explained in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the ordinary observer test provides:

“[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

If Apple provided all sides and all features of the iPhone in solid lines in the ‘087 patent, could the jury have found the differences in the Galaxy phone, including the back shape and the lack of a home button, were enough to prevent the ordinary observer being deceived to purchase the Galaxy supposing it was the iPhone? Maybe so. Even if not, it would have made Apple’s case harder to prove.

Determining Important Features

Before drafting design patent drawings, first determine which features are important and which features are not important or are less important.

In figure 19 of the ‘087 patent, Apple determined the unique and important features to protect were the rounded rectangular bezel and the phone speaker opening on the front face. Apple provided the other features, the back/side shape and the home button, in broken lines.

It is common for the back or bottom of a product to be less important, especially if the back or bottom is not regularly seen by customers or users. Less important or unimportant features can be shown in broken lines so that those features do not limit your design patent rights.

The strategic use of broken lines for unimportant or less important features in a design patent  can allow you to focus the patent protection on the important portions of your product. By focusing on those important portions, you can achieve broader design patent protection.

Broader design patent protection will protect against competitors introducing designs that copy your important features but modify unimportant features to avoid your design patent. In the Apple case, Samsung was unable to avoid the ‘087 patent by making changes to the shape of the back, while providing a similar front bezel and flat face.

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Record Patent Assignments or Risk Loss of Rights

The case of CMS Industries, Inc. v. L. P. S. International, Ltd. is about how to loose rights in patents by not recording ownership changes with the U.S. Patent and Trademark Office (USPTO). It involved the seller trying to tell the public it was doing one thing (selling patents to a subsidiary company) while secretly reserving ownership for itself. It failed.

SEE International, Inc. assigned, in a first assignment, its rights in six patents to SEE’s subsidiary, Shoplifter International. But on the same day SEE and Shoplifter International entered into a second agreement purporting to transfer back to SEE all of the rights transferred to shoplifter under the first assignment.

The first assignment transferring rights to shoplifter international was recorded with the patent office. The second assignment was not.

Later Shoplifter International entered bankruptcy and its assets, including the six patents, were sold to a third party, Elmer Whitaker.

Whitaker’s licensee CMS filed a lawsuit against LPS international, another subsidiary of SEE. CMS Industries, Inc. v. L. P. S. International, Ltd., 643 F.2d 289 (5th Cir. 1981). LPS and SEE claimed that the second unrecorded agreement prevented CMS from winning its lawsuit and that SEE still had rights in the six patents.

But because SEE failed to record the second agreement with the USPTO, the second agreement was unenforceable against Whitaker who had no knowledge of it at the time that Whitaker acquired rights in the patents. The court held that Whitaker was the proper owner of six patents.

Patent Ownership Recording System

SEE failed because 35 U.S.C. 261, which provides “An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.”

That means that if an assignment is not recorded at the USPTO, it will not be superior to rights obtained by a third party for value if that third party did not have knowledge of the unrecorded assignment.

This provision is similar to many state-based systems of recording ownership of land.

Section 261 encourages patent owners to file (record) evidence of their ownership of a patent with the USTPO. This allows people who enter into transactions regarding those patents to look to the public record to determine whether the person they’re dealing with is the actual owner or not.

The recording system discourages a seller from selling rights to a first person and then selling the same rights to a second person. The first person will have an incentive to record that transfer with the USPTO because of the protections provided by section 261.

If the first person records at the USPTO, the second person, before proceeding with the transaction, can check the patent office to see that the first person is the owner. The second person then will not proceed with the transaction from the original seller who no longer has rights in the patents.

Record or Be At Risk

Therefore, when you purchase patent rights it is very important for you to record at the USPTO the assignment (or other transfer document) transferring those patent rights to you. Otherwise you could lose rights in the patents to someone who purchases rights in the patents later without knowledge of your ownership/assignment.