Why Patents Matter To Everyone –Breast Cancer Edition

Two weekends ago when the Nor’easter hammered New York City, my husband and I were in New York for some family business. We wandered through the rain to meet some friends and have lunch and catch up. These are friends we’ve known since college with whom we can really talk about life and where it’s taken you. The real stories. Not the “everything is great” version of adulthood.

My friend is a breast cancer survivor. As breast cancer goes, she had a rough time. Tough surgeries and more of them than most women. A tough time with the chemo. Plus all the other stuff that goes along with being a breast cancer survivor – gaining weight, losing her hair, being tired, having chemo memory, the emotionally crushing personal and family emotional issues. She worked the whole time she was in treatment. She’s much tougher than me.

During the conversation we talked about pink ribbons, whether she was sick of seeing them and how the experience affected her family. Families who experience breast cancer have their own perspective on the healthcare system and breast cancer that the casual outside observer doesn’t have. She told me she was worried about her daughter. She mentioned that she had been tested for a particular gene mutation that is present in women with certain types of cancer. She is an Ashkenazi Jew. Ashkenazi Jews of Eastern Europe heritage are more likely to have gene mutations in the BRCA1 and BRCA2 genes. There is a link between these mutations and breast cancer and ovarian cancer.

My friend was talking about how she had been tested and things turned out well for her. She was shocked about how expensive the test was. Her insurance paid for the test but now she and her husband needed to decide if they should have their daughter tested. He is Sephardic, a Jew of Meditaranean descent. That improves the odds that their daughter might not have the mutation. The test cost over $3,000.

We talked about the test and the cost. As an aside she said, “I don’t understand why this test costs so much?”

“Patents.” It’s all about the patents. I explained that Myraid Genetics sells the test for the presence of the genes that indicate a predisposition for breast cancer. The patents are on DNA sequences from the gene. Myriad and the Univeristy of Utah owned seven patents on its BRCAnalysis test. They had a corner on the market. Not only do they perform the test but there would be no second opinion because no one else could do the test without violating Myriad’s patents. She asked a simple question, “How can you patent something in the human body?

This led to the whole discussion on discovery versus invention; and fairness, and science. Anyway, it was pretty serious stuff for a Saturday brunch so we moved on.

Yesterday the court answered the question when Judge Robert Sweet wrote in his opinion that the Myriad patents covered part of the natural world and therefore did not qualify for patent protection. The isolated DNA that Myriad discovered was a product of nature. According to the ACLU over 20% of the human genome has been patented.

It remains to be seen how all this will end up. Myriad’s stock went down 5.5% today, another indication that the loss of patent protection can be market moving. But one of the things that we know for sure is that everyone needs to understand the role that patents and innovation play in their lives and how these inventions impact us. The Judge’s opinion is a good read on the topic. (PDF).

By the way, a major decision that impacts a huge chunk of the genome domain, personalized medicine, woman with breast cancer, and moves the stock price of Myriad 5.5% in a single day and none of the major commentators included the patent numbers in their reporting or commentary so here they are:

5,747,282

5,837,492

5,693,473

5,709,999

5,753,441

5,710,001

6,033,857

Class 705 Schedule Changes, Classification Order 1892 - Installment 1

Mike Bowman has provided an introduction to the recent changes to Class 705 under Classification Order 1892, which added subclasses 705/300 through 348 and that were inserted by the USPTO between Subclass 705/45 and 705/400, with the exception of Digital Rights Management, 705/901-912, which is for cross-reference discretionary classification listings only and will be discussed in a future installment. For this particular project, Mike and I reclassified some 4,000 documents according to subject matter, which were originally classified as 705/1.

This is the first of a five (5) part series to describe the changes and some of the inventive content that may appear in this subclass array. This installment covers subclasses 300 through 316.

We have included the subclass section 300 through 316 that is under discussion below for reference. For the complete Schedule and Definition listing for 300 through 348, use this link to get to the Classification Order.

300 . Collaborative creation of a product or a service

301 . Workflow collaboration or project management

302 . Product or service warranty

303 . Product recall

304 . Customer service (i.e., after purchase)

305 . Product repair or maintenance administration

306 . Product appraisal

307 . Rental (i.e., leasing)

308 . Product recycling or disposal administration

309 . Alternate dispute resolution

310 . Intellectual property management

311 . Legal service

312 .. Estate planning

313 . Real estate

314 .. Property management

315 .. Land development

316 .. Closing

As a reminder, anything classified in Class 705 must involve apparatus or method applied to data processing operations for some type of business processes. Starting with 300 and 301, the subject matter covers collaborative operations such as methodology that involves product or service concept development that occurs between various parties or for that matter, various businesses. In the case of 301, it is project related collaborative activities, that not 705/8 resource related or 705/9 staff related task in a project.

The subclasses 302 through 306, and 308 can be considered services for clients that primarily occur after the sale of the product or the service that is being rendered, such as processes for administering a warranty, including product safety or defects recall. In 305, this is subject matter related to methodology for administering repairs of anything considered a product, in 306 any appraisal process for determining the remaining value of anything that is a commodity, which can be applied to the insurance, banking and real estate industry, just to name a few possible applications. Subclass 308, product recycling or disposal administration, is going to become huge, and will include methodology for processing waste, waste stream management, waste sorting and recycling. For example, battery reclamation and electronic component reclamation processes may be classified here.

Back tracking in the revised Schedule to 307, the Definition for 307 “Rental (i.e., leasing)” states this is “Subject matter drawn to a computerized arrangement for the creation or maintenance of a record keeping system for recording the allocation of the temporary use of commodities”.

There is a problem here. The USPTO “Handbook of Classification” specifies that a Claim is classified in the first occurring subclass that accepts the claimed subject matter at least in part or in whole. Record keeping of resource allocation, regardless of the resource being leased, is an administrative function for a resource that is being allocated. If properly classified, this subject matter will always stop first in 705/8, “Allocating resources or scheduling for an administrative function”, which based on the subject matter, means that 307 will at best only be a Discretionary classification listing.

310 relates to intellectual property rights management of copyrightable works, patented inventions, trademarks, trade secrets, etc…such as methodology involving licensing, royalties or other means for protecting intellectual property, which could include litigation methodology applied to property rights.

The coverage of 311 is very broad: “…computerized arrangement for work performed by a lawyer for a client”. There is one indent to 311, Subclass 312 for estate planning, for subject matter limited to legal arrangements that will be executed post-life subject matter, which claim dependent, may stop in higher in 705/30, 705/36R or 36T.

The 313 through 316 Subclass array cover real estate development, construction of buildings, buying and selling of land including natural resources, with additions breakouts for services applied to managing commercial, industrial or residential real estate property in 314, methods for increasing property value in 315, and methods applied to transfer of property ownership from one party to another in 316. A good deal of this collective subject matter must be read carefully for content that stops higher in the Schedule in 705/8, 705/30 and 705/35.

Mike Bowman with provide Part 2 of this 5 part series, which will cover a breakdown of 705/317-325, inventions in the areas of business or product certification, social networking, human resources, destination assistance within a business complex, and personal security.

My next installment, Part 3, will cover 705/326-328,329,330-341, covering new breakouts related to business process involving education, fundraising, and shipping processes.

Business Method Monday --General Business Methods Schedule Changes -- Introduction

Additional large changes in the USPTO's Business Methods schedule will soon appear. In early February 2010, USPTO released Classification Order 1892, which expands subclass 705/1, AUTOMATED ELECTRICAL FINANCIAL OR BUSINESS PRACTICE OR MANAGEMENT ARRANGEMENT to 49 new subclasses from 705/300--348, and 12 new subclasses in a cross-reference art collection from 705/901--912. This post begins a series in which Sean and I will describe these changes and the new inventive content they explicitly cover.

General business methods inventions that were not otherwise classifiable in Class 705 either above 705/1 in the schedule (art dealing with business processing using cryptography, or with electronic negotiation), or below it in numerous other subclasses, have been classified here. USPTO undertook a reclassification project over the past couple of years to analyze the patents and pre-grant publications (i.e., patent applications) that had accumulated in subclass 705/1 and break them out into new subclasses. This new structure has not yet migrated to the USPTO's Manual of Classification, but it soon will.

Our upcoming series will address the following topics:

• Part 1: New subclasses covering work collaboration, products and services, intellectual property and legal services, and real estate
• Part 2: Inventions in the areas of business or product certification, social networking, human resources, destination assistance within a business, and personal security
• Part 3: New breakouts on education, fundraising, and shipping
• Part 4: Business documentation, employee and customer communications, business ratings, and business modeling
• Part 5: Digital rights management

Reclassification projects, and the new structure they form in the patent landscape, represent opportunities for inventors to help define the body of art in newly created subclasses. Holders of patent portfolios also might want to re-evaluate their holdings in light of schedule and definition changes, and art assigned by USPTO to each new subclass, to determine whether the potential exists for legal exposure, either positive or negative.

If you have questions or specific areas you'd like to see us cover, leave us a comment. We'll do our best to include your comments in our posts.

We look forward to sharing our thoughts in this series,

Mike.

Business Methods Monday is the work of Michael L. Bowman and Sean Henderson

Academic Inventor's Bill of Rights

The Association of University Technology Managers (AUTM) kicked off it's annual meeting with the release of the Academic Inventor's Bill of Rights.

The Inventors’ Bill of Rights proposes, among other things:

• Students and faculty have a right to freedom of expression; the right to teach and publish their research shall not be abridged by intellectual property policy.
• Inventors shall be entitled to timely disposition of their inventions and to obtain access to inventions for which the University elects to discontinue commercialization effort, without onerous restrictions or obligations to the university that would act as disincentives to commercialize.
• Universities must establish and publish transparent practices and procedures comprising their commercialization processes.
• Inventors have the right to due process, conducted in public with public access to all records as they may request.
• All inventors, including students and other subordinate persons, shall have equal right to institutional protection of their interests in their intellectual property regardless of academic rank or position.
• Inventors have the right to be informed about any license negotiations or re-negotiations.
• Any changes to intellectual property or commercialization policies shall be approved by the appropriate faculty-run governance body, such as a Faculty Senate.
• Disputes shall be resolved by a committee that includes faculty, student and administrative representatives.
• No university may require present assignment of future IP rights as a condition of employment or student enrollment.

Or, at a minimum:

• Inventors who assign their IP to a university may elect a qualified independent agent to promote their invention into public use. The agent must represent the interests of the university, public and inventors. Election of an agent does not modify the pre-existing royalty sharing arrangements.

Read the press release at:

Inventors’ Bill of Rights Unveiled at AUTM Conference – Cleveland Clinic Director of Commercialization Teams with IP Advocate Founder to Codify Inventors’ Role in Licensing IP | WebSphere Journal

So You Think You Have a Patent...

In our installments of “Business Method Monday”, Mike and I outlined issues we have seen that patent applicants should consider as they create their applications, work with their patent agents and attorneys, and help insure that their patent is valid particularly where there is capital development in process, or where an inventor is protecting a revenue stream from a product or services, a license agreement, or royalties for the use of the patented technology.

A quick review…each claim must be classified based on the subject matter it discloses. Each claim is assigned to a specific Class and Subclass in the US Patent Classification system based on where that subject matter resides. A single claim may have additional subject matter claimed that is outside of the primary classification subclass array and is lower in the Class Schedule. It should have cross-reference listings of any Subclasses that applies. The same Claim may disclose detail that is outside of the Primary Class altogether, which should have additional cross-reference listings of all Classes and Subclasses where that subject matter resides. Please note that according to the USPTO classification guidelines, a Primary classification must come from “Claimed” subject matter and the same rule applies to what are know as Mandatory classifications. Discretionary classifications can optionally be assigned for subject matter that is disclosed in the Abstract, the Claims or that is disclosed in the description detail that follows the Claims, that the Examiner thinks may be important for future search activity.

Once the determination of where the Claimed subject matter resides is complete, the Examiner doing a diligent prior art search must search each of those Class/Subclass areas for art that invalidates any part of, or all of the Claimed subject matter.

Areas the Examiner searched during the examination are listed after the “Field of Search” heading on your Patent. This list includes Class/Subclasses searched, and may also include references to the documents searched.

We are going to look at two example Patents. The first is 6,108,637, issued on August 22, 2000, as a Primary in 705/7 and crosses to 705/30; 707/10; 714/E11.189; 715/207; 715/234. The Field of Search listed is 705/1, 7, 8, 9, 30; 706/11; 707/10, 200, 202, 512, 204, 526 395/200.54, 200.53, 200.59, 712,182.04, 675, 200.79, 200.47. There is no business method claimed, nor any 705/7 business operational analysis claimed. In this particular case, it appears that the 705 classification was based on the Abstract or the Disclosed detail, rather than the Claims detail and at best the 705/7 classification should be a Discretionary classification only. What is actually claimed is monitoring the position of a content display on a display screen, evaluating the position of the content and determining the total duration of time that the content display is hidden by the one or more images. That is not the limit of what is claimed, but the subject matter belongs in various Subclasses in Class 715 and in some cases in Class 709, which based on the Field of Search history, appears not to have been searched by the Examiner. In addition, Class 345 should absolutely have been searched.

The next Patent is 7,313,532, issued as a Primary in 705/7 on December 25, 2007, with a Field of Search listing only 705/7. What is actually claimed is 705/8 and 705/10 subject matter, resource allocation from an inventory system and market analysis of sales data, specifically, determining the most profitable distribution policy for a single period inventory system, based on historical sales data for an item to forecasting the mean demand for said item, which is applied in various claims, to initiates the allocation procedure from the optimal draw, and in other claims, determining optimal stock level draw for the most profitable distribution policy for a sales target. Again, it appears that no search was conducted by the Examiner in 705/8 and 705/10 where the claimed subject matter actually resides.

I did some brief searches using the Coronado Cognition IP search engine and pretty quickly found prior art that would demand close reading as is remarkably similar to these patents. In the case of 7,313,532, two patents that came up were 5,884,300, issued on March 16, 1999 and 7,039,479, issued on May 2, 2006 that are of interest. Time was limited, so I did not continue the search, nor did I look at published Applications, but based on subject matter I seem to remember seeing there, I suspect there are others published documents that could be of concern.

In coming installments I'll address some "patent prevention issues" -- techniques that can lead to a novel invention never seeing the light of day as a patent:

• Intentionally extremely vague or someone appears to want the claims to be very broad.
• Applications where it appears that someone other than the applicant was writing the claims and did not really understand what the invention was.

Until then, Sean

Advertising Image v. Multimedia Object REDUX

Last July, Arleen wrote a post Advertising Image v. Multimedia Object about ad images v. multimedia images in movies. Would the classifications applied by USPTO to the two patent applications she cited change in light of the recent changes to the advertising section of the class 705 schedule?

The first of these applications is 10/112,519 -- Method and System for Providing Intelligent Advertisement Placement in a Motion Picture. As described in the Abstract, the invention provides for "intelligently embedding advertisements into motion picture content . . . [by] receiving personalized data and the identity of a motion picture from a user over a computer network; selecting an advertisement image having attributes that approximately match the personalized data; editing the motion picture to include the selected advertisement image; and transmitting the edited motion picture to the user over the computer network for viewing." Note that the three primary and cross-reference classifications applied by USPTO to this application all lie within class 725, Interactive Video Distribution Systems.

Claim 1 states: "A method for providing intelligent advertisement placement in a motion picture, comprising: retrieving personalized data associated with a viewer; comparing the personalized data with a plurality of attributes, each attribute associated with an advertisement image, to determine an attribute that is most consistent with the personalized data; retrieving an advertisement image associated with the attribute that is most consistent with the personalized data; and imposing the retrieved advertisement image on a sequence of image frames of a motion picture."

The first three aspects of this claim ("retrieving personalized data . . .; comparing . . . data with . . . attributes . . .; retrieving an advertisement image . . .") are captured by 705/14.66, Based on user profile or attribute. This subclass, indented under 705/14.49 Targeted advertisement, requires subject matter in which "a set of data or a characteristic of an individual is used to increase interest in a promotion." One might be tempted to proceed to the next indented subclass, 705/14.67 Personalized advertisement, however, the claimed subject matter does not meet the defined requirement for "at least one personal characteristic . . . of an individual [being] added to a promotion." The final aspect of claim 1 ("imposing the retrieved advertisement on a sequence of image frames . . .") is classified as 725/34, Specific to individual user or household.

Claim 1 should be classified as 705/14.66, using the USPTO's classification rule that subject matter is classified at the highest, most indented subclass which captures it. A cross-reference classification to 725/34 would also be appropriate.

Claims 2-11, which depend on claim 1, add more detail but they do not change the two classifications just noted. Of interest is claim 6 which includes ". . . generating attributes based on demographic information selected from a group including age, gender, income, occupation, recreational interest, and geographic information." We referred above to 705/14.67, which includes specific personal characteristics such as age or address. We might be tempted to apply that classification to claim 6, but, again, the definition requires the characteristic being "added to a promotion", for example "Greetings on your 32nd Birthday, Dave, we have a gift for you . . .". This step is not claimed, and we therefore can't apply that classification here.

The remaining claim arrays in this application (claims 12-18, 19-27, 28-32, 33, and 34) provide additional detail, and allowed USPTO to add the other class 725 cross-references (725/35, 725/42), but they do not change the targeted advertising classificaton of 705/14.66.

The second application Arleen discussed last July is 11/486,683 -- System for Creating Dynamically Personalized Media. From the abstract we can immediately see that advertising ("product placements", "enables advertisers to precisely control product placement on a customized basis") in multi-media programs is the subject of the application. However, in reviewing the claims, which are the basis for classification, it is not until we reach the third claim set (independent claim 15 and its dependent claims 16-21) that it is clear that ad placement is being claimed. Arleen alluded to the somewhat unclear writing and vocabulary used in this application. (Editorial aside -- it is to inventors' and application writers' advantage to write clearly using terms appropriate and readily understandable to one skilled in the art they are discussing. This will help ensure correct classification, greater accuracy of examination in the context of the art actually being claimed, and a quicker, and therefore less costly, examination process.)

Take a look at this application in the USPTO's Patent Application Full Text and Image Database. The classifications provided for the U.S. Current Class field are 705/14.61 (the primary classification is in bold) and 705/14.67. This indicates that the application was re-classified following its original publication (primary classification at that time was 705/14).

Claims 15-20 would be classified in 705/14.49, Targeted advertisement. Claim 21 adds detail, ". . . the time in the master program where a product appears . . . and how long a product is enabled" which requires classification in indented subclass 705/14.61, Based upon schedule. This subclass requires "the specific time or day that a promotion is going to be available or exposed to the public." Because this subclass is the most indented, highest in the subclass array, it becomes the primary classification.

The other classification listed on this application is 705/14.67, Personalized advertisement, which requires "at least one personal characteristic (e.g., name, birthday, age, phone number, or address, etc.,) of an individual [be] added to a promotion." Where does this classification arise from? According to the rules of classification, it cannot be a mandatory classification, as it is lower in the same subclass array than the primary (705/14.61). It must therefore be a cross-reference classification, but what claim language leads to it? A very careful reading of the claims leads to the conclusion that there is no claim language supporting this classification. However, look at the "Brief Summary of the Invention" section, paragraph 0014, on the USPTO Full Text Database page. The first sentence states "In addition, by collecting data on recipient viewing habits and analyzing that data in light of other recipient account information (from other databases), the multi-media object management system is able to intelligently select and display products or services to a recipient who is truly interested in purchasing these displayed products or services." This would meet the definition for a personalized ad, and it seems likely that this is a possible source for this classification.

There are several take-away lessons here. First, and to re-emphasize, clear writing and accurate, art-appropriate terminology, is to the applicants' distinct advantage. Over the short-term, this can help provide a quicker, more accurate, and less costly examination process. Over the long-term, assuming a patent is granted, clear accurately written patents can help ensure protection against infringement or licensing lawsuits by increasing the likelihood that they are examined against the correct art. Second, although Google Patents is a useful search tool, the classifications it shows are not updated to reflect class schedule and definiton changes, and subsequent reclassification of patents and applications by USPTO in resposne to those changes. Inventors and assignees should avail themselves of a wide range of tools to increase the accuracy of their research.

Until next time, Mike

Apple talks tough to handset

Some new commentary on the Apple v. HTC show down and Apple's IP portfolio.

Apple talks tough to handset makers

Posted using ShareThis

Think The Way They Search - Installment 2

More on classifications and why they can help you learn to Think the Way USPTO Searches and how they think about what's in a patent.

In our first installment we talked about the Original or Primary classification on a patent or application respectively. This is the classification that appears in BOLD on in the US CL section of the patent or application. This classification determines which Group Art Unit at USPTO is going to examine your patent.

But what do the other classifications tell you? They are supposed to give you insight into rest of the inventive art that is disclosed in a patent or application. The classifications tell you what USPTO believes is in your patent or application is all about.

When the patents are classified, the person looking at the patent looks at every claim. Every single claim. They classify each claim independently and then pick the controlling claim which in turn determines which class/subclass pair will be the primary or Original classification.

Once that's done, they assemble the rest of the class/subclass data they created by classifying each claim and then create the mandatory classifications - the rest of the classes that appear to the right of the classification in BOLD on the front page of a patent or application. These classes describe the rest of the inventive art in the patent.

If you look at patent 5,960,411, Method and System for Placing a Purchase Order Via a Communications Network - the Amazon One Click Patent, it has three classifications.

705/26 - Electronic Shopping (e.g., remote ordering): ...enabling a user to inspect or select from a plurality of different items, or effect a purchase of one or more items at location geographically separated from the system user. This is the Original Classification that appears in BOLD.

This subclass is indented under Automated Electrical Financial or Business Practice or Management Arrangement (705/1). So it requires that the invention use an electrical apparatus and its methods which perform data processing operations.

705/27 - This class is indented under 705/26. This invention also includes presentation of image or description of sales items (e.g., electronic catelog browsing.) The invention includes the ability to inspect a listing or other visual or audiable representations of plural items available for purchase.

345/962 - The final classification is in Class 345 - Computer Graphics Processing ad Selective Visual Display Systems. This class appears on the image of the patent. It also appears on the Google Patents version of the patent above. And here is the rub. This class was abolished and replaced somewhere along the line. So, if you are looking at the image or the data on Google Patents you are not getting the correct information.

The USPTO full text database shows the final classification on the One Click patent as 715/962. This is an operator interface with visual structure or function dictated by the intended use. In particular it calls for a system with an operator interface for marketing and sales. To be in this class the invention will include features "wherein the given task is a commercial function involving user response."

So based on the claims, that's what USPTO says this patent is all about. Claim 6 is provided as an example. For anyone who has been following it or is licensing it this patent covers: (Comments in RED)

6. A client system for ordering an item comprising:

an identifier that identifies a customer; (this is the part where the system knows who you are and has stored info about you.)

a display component for displaying information identifying the item; (this is the part where you can see the items for sale.)

a single-action ordering component that in response to performance of only a single action, sends a request to a server system to order the identified item, the request including the identifier so that the server system can locate additional information needed to complete the order and so that the server system can fulfill the generated order to complete purchase of the item; and (Single-action - the one click part)

a shopping cart ordering component that in response to performance of an add-to-shopping-cart action, sends a request to the server system to add the item to a shopping cart. (the electronic shopping cart)

As anyone who's used Amazon's One Click feature, bought a song on iTunes, or ordered a pay per view movie with their remote control, what this is really about is being able to order an item using a single action where only a single action is required to complete the sale because the system already knows who you are.

I'm sure our business methods guys will be able to shine some light on how the reclassification of the Business Methods section of the classification schedule, Class 705. But in the meantime this gives you a feel for how to use the classifications to see what USPTO thinks a patent is about. When you load your invention disclosure into Cognition IP we return the patents that are the closest as well as the class they are in. It helps you figure out where your work might wind up.

So the classifications got you close but you are going to have to look at the patents in that space, the ones assigned those classifications, to figure out what has already been invented and the boundaries of what would be novel invention in light of what is already classified.

Bad Actors in Patent Prosecution?

We were having a conversation with a very smart patent guy. He was asking about how to cull through many thousands of patents to see how many of them had the same specification. When I asked him what's up he said Cold Spring Harbor Labs. He added he needs to find patents and patent applications with the same specifications.

"The same specification like when there is a continuation in part or a divisional patent application where the inventor uses the same specification but just changes the claims?" (Arleen)

"No" (Smart Guy)

"The "same" as in the specification that discusses the same art. Like in a hunt for powerful prior art?" (Arleen)

"No. The same as in verbatim passages, think plagiarism, think stolen from another inventor. Passages of one patent that show up in someone else's application. There are bad actors out there." (Smart Guy)

Cold Spring Harbor Laboratory (CSHL) is suing its patent prosecution law firm and one of the firms attorneys for fraudulent prosecution of its patent applications because the attorney copied portions of prior art patent applications verbatim into one of CSHL's patent applications instead of writing an original specification for the new invention. It took a while for CSHL to figure it out but by the time they did, the damage was done.

Then add the "I need a shower after reading this thing" element of this case, the attorney created a patent search company without disclosing it to his clients or his partners at the law firm. His patent search company then billed CSHL for over $700,000 in services that weren't performed. The attorney approved the bills which were then paid by the law firm and CSHL to his do nothing search company. Talk about adding insult to injury.

The patent plagiarism was discovered by one of CSHL's licensing associates and patent attorneys well after the patent applications were filed. This was not a eureka moment of discovery. It was probably one of those the room is spinning, nauseous, am I really seeing what I think I'm seeing moments.

One has to wonder how much more of this is going on when the tools to look for this type of plagiarism are so limited. We've been doing it for a while to protect trade secrets and the techniques are used in the intelligence space to make sure that classified documents aren't released in emails or inadvertently (or deliberately) copied into new documents and printed or emailed.

CSHL is seeking $82M in damages because its inventor, Dr. Gregory Hannon and his colleagues were deprived of the benefits of their inventions and the ability to commercialize their inventions.

I wonder about the harm that may have been done to Dr. Hannon's and CSHL's s reputation within USPTO as the examiner discovered the patent plagiarism that was repeated over and over again by the bad actor. Did this result in the examiners who worked on applications from CSHL questioning the integrity of other applications as they worked their way through the system? The filing shows that the examiners did a good job and knew the art in the area so well that they found the plagiarism. CSHL also made efforts to clarify what was happening with USPTO but sometimes impressions can be lasting.

You can read the filing here. It will be interesting to see if other victims of this patent malpractice surface.

Finding Bargains - Business Methods Monday

Last week I wrote about the changes to the Discounts or Incentive portion of the USPTO Class 705 schedule. Today we'll review major changes to the Advertisement section (705/14.4 -- 705/14.73) of the schedule.

As with discounts, the USPTO greatly expanded the detail concerning advertising inventions. They expanded from one subclass (705/14) to 34. You might want to refer to the Class 705 Schedule Page in another window and locate subclass 705/14.4 as we examine the recent changes to advertisement patents.

To be classified as an advertisement, the claimed art must include the act "of promoting or calling to the attention of the public any goods or services to induce the public to buy or use the goods or services." As of today, March 3, 2010 as I write this post, the USPTO has placed 1,680 patents with an original or cross-reference classification within the 705/14.4 array, including all its subclasses. 164 patents (10%) are located within the advertisement subclass (705/14.4).

The advertising art section of the business methods schedule is composed of several major sub-arrays. Indented immediately below Advertising is a section dealing with analysis, introduced by subclass 705/14.41, determination of advertisement effectiveness. The key to being classified in this array is that "an analysis is conducted in order to ascertain the degree to which the intended or expected result of a promotion is achieved." Note that an analysis must be conducted by the claimed art. If the claimed art allows classification here, then additional detail may require classification in one of the four further indented subclasses:

• Comparative campaigns (705/14.42) in which two or more promotions are evaluated to determine which one attains the highest degree of intended or expected results
• Optimization (705/14.43) where there is an analysis of a constraint of a promotion resulting in a reworking of that promotion to improve its current or future effectiveness
• Survey (705/14.44) which is a collection of public opinion about a promotion in order to determine its effectiveness
• Traffic (705/14.45) in which the commercial activity generated by a promotion is analyzed. 89 patents (5%) are found in this array.

Immediately below the analysis section are three subclasses which address calculation of past, present, or future revenue (705/14.46), avoiding fraud (705/14.47), and advertising based on a budget or funds (705/14.48). 58 patents are currently assigned to these subclasses.

This brings us to the largest, most complex portion of the advertising schedule. Targeted advertisements (705/14.49 -- 14.67) cover 19 subclasses, and 678 patents (40%). Inventive art must include "a promotion . . . directed at or to an individual or individuals based on predetermined criteria" to be classified here. Several of the key subclasses in this area include:

• Based on an event or environment (e.g., weather, festival, etc.) (705/14.5)
• During e-commerce (705/14.51)
• Based on user history (705/14.53), and its indented child subclass, user search (705/14.54)
• Based upon a schedule (705/14.61)
• Wireless device (705/14.64)
• At Point of Sale (705/14.65)
• Based on user profile or attribute (705/14.66), and its indented child subclass, personalized advertisement (705/14.67).

The next section of the advertising schedule deals with fees for advertising (705/14.69); inventions classified here must include "compensation or billing for the promotion of a good or a service." Two subclasses are indented under fees: split fees (705/14.7) and auctions (705/14.71). 171 patents (10%) are found here.

Finally, at the bottom of the advertising array, we find a subclass for creating advertisements (705/14.72), and one for online advertisements (705/14.73). This last subclass contains 462 patents, 28% of all the patents found in advertising.

In today's business climate, strong competition for customers might be expected to drive more innovation in advertising, particularly in light of converging technologies such as cell phones that receive text messages, serve as web browsers, and contain GPS transceivers that allow highly targeted, location-specific advertising using "geofencing" concepts -- using a defined geographic area of a map. The increased complexity of the advertising art, as revealed in USPTO's class 705/14.4 schedule array, provides more opportunity for inventors to submit unique patent applications. The U.S. Supreme Court's upcoming decision in the Bilski v. Kappos case could drastically change the patent landscape for advertising, along with all other business methods patents.

Let us know your thoughts.

Until next Monday -- Mike

Battle of the Smart Phone Titans

The latest salvo in wireless war came from Apple this week with it's patent lawsuit filed against HTC. There's plenty of speculation about this being an indirect hit against Google and the visit to the ITC to stop any further imports of infringing Android smart-phones which must be creating major acid indigestion for the organizations investing in marketing the technology. The patents are pretty interesting and so are the dynamics in the patent lawsuit arena. Soon all these guys will run out of lawyers aren't already "taken" as a result of their conflicts checks. I read all the articles. Aside from the annoying fact that most of the reporting didn't have even the most basic explanation of what the patents are all about and what features in particular are in play; the dynamics of the battle of the titans should make for interesting IP theater.

Here are my two favorite quotes from opposite ends of the intellectual property spectrum:

From Steve Jobs:

"We can sit by and watch competitors steal our patented inventions, or we can do something about it. We decided to do something about it...We think competition is healthy, but competitors should create their own original technology, not steal ours."

From Douglas Rushkoff's article, "The iPhone Becomes a Bully", from the DailyBeast:
"Still, in an increasingly crowded smart-phone industry, it's hard to tell if Apple's claims are more about protecting innovation, or merely protecting market share. In fact, these two aims may even be at odds."

Last time I checked I thought that one of the major reasons of protecting innovation with patents was to protect your market share - at least if you are someone who actually makes stuff or at least get license revenue from the folks who make stuff that uses your innovations.

Wheel Reinvention Prevention:

To avoid "wheel reinvention", which is not good IP practice, here are two excellent links. Nick Bilton of The New York Times provides a compelling visual on who is suing who. The second is a link from engadget.com which provides a technical breakdown of the patents in suit by Nilay Patel.

Stay tuned.

Think the Way They Search - Installment 1

Coronado Group is an evangelist driven to teach people to Search the Way You Think. Our Cognition IP suite lets you use detailed and nuanced text that represents your complex ideas, inventions, products, and research to search and find patents. Once you find the patents that are conceptually and semantically closest to what you are looking for, we add in other tools to help you navigate through the US and International patent world. One of the more useful tools is the patent class trees.

One of the most challenging and daunting skills to develop is how to take advantage of is the US and International Classifications systems. We've worked with a lot of patent attorneys who have told us flat out that it's just to hard to deal with using the schedules so they use other methods for hunting down prior art and information on new patents. "Classifications are just number mumbo jumbo that clutter up the front page of the patent," says one of our classification handicapped colleagues.

So, we bring you Coronado's Classification Crash Course.

There are two classifications systems. The one maintained and used by the USPTO - the US Patent Classification system (USPC). The second classification system is the one maintained by the World Intellectual Property Organization (WIPO). The WIPO International Patent Classification System (IPC) is used by the rest of the world the International Patent Classification system (IPC), or at least most of the rest of the world.

Understanding how USPTO uses the patent classification schedules and how you can use the content of our invention disclosure and other important patent application documents to get an idea of which Group Art Unit at USPTO is likely to examine your patent can be important information as you move through the patent prosecution process.

So we'll take a shot at explaining the patent classification system and teach you how to think the way they search -- to understand the basics of the US Patent Classification system and how to use it to find important information.

The Basics...

On the front page of each granted patent and published patent application you'll find the classification data. Let's start with the US Patent Classification data. The US patent classification information looks like this:

(52) U.S. Cl. ..... 705/7; 705/30; 705/14.1

What's the most important piece of information in this sting of data? The classification in BOLD. This is the classification that determines which Group Art Unit at USPTO that is responsible for examining your patent.

It's not such a big deal when it's your patent or patent application because you already know who has your patent application or who examined your patent. Where it comes in handy and can be a very big deal is when you want to figure out where one of your competitors patents is being examined or where subject matter you think is similar is placed. Knowing this information can provide insight into how USPTO is thinking about certain types of inventive art and where your invention fits into the scheme of things.

On patents the classification in BOLD is called the Original Classification or the OR in Patent Office parlance. On patent applications the classification in BOLD is called the Primary Classification. The classification in BOLD is also called the CONTROLLING CLASS.

And what determines the Controlling Class? The Most Comprehensive Claim in the patent or application. The claim that the classifier believes contains the most comprehensive subject matter, the most extensive (greatest in USPTO speak) combination of elements and subject matter. The one that discloses the invention in the most comprehensive way.

And..the Most Comprehensive Claim can be a dependent claim. In fact it usually is a dependent claim because they tend to have all the bells and whistles attached. So when you write your most extensive claim, the one with the most comprehensive subject matter, remember that may be the very claim that decides who is going to examine the application.

Stay Tuned.

Bargains, Bargains, Where Are My Bargains?

Business Methods Monday

In last Monday's post I talked about how the USPTO significantly increased the resolution and complexity of the Discounts and Advertising portions of Class 705. Discount or incentive art are encompassed within subclasses 705/14.1 (Discount or Incentive) through 705/14/39 (Online Discount or Incentive). Advertisements are covered in subclasses 705.14.4 (Advertisement) through 705/14/73.

How much detail has been added? The discount portion of the schedule no includes 30 subclasses. All of that inventive art had previously been classified within a single class - 705/14.

Today we'll explore the broad outline of the Discount and Incentive subclass array.

To help you understand the new complexity in this Business Method Area you might want to open the Class 705 Schedule Page in another window and scroll down to subclass 14.1 as we walk through how discount and incentive patents are classified. You can also CLICK HERE.

Most of the new granularity in this area of the Class 705 schedule is indented one level further than that of the discount or incentive subclass (705/14.1) that introduces it. To be classified in this array, the claimed art must include a "price reduction of, or premium credit resulting from, the purchase of a good or service, or a commercial offer to incite, stimulate, or provoke an increase in business, through a commercial transaction" It is important to note that the mere mention of discount or incentive in name only, a nominal recitation in USPTO parlance, like just mentioning a "coupon" or "rebate" in the claims, is insufficient to classify are in this subclass.

The upper portion of the discount section of the Business Methods Schedule incorporates aspects such as specific activities required to receive an incentive (705/14.11 - trade or exchange of a good or service, 705/14.12 - playing a video game, 705/14.16 - referral reward, and 705/14.19 - giving input on a product or service, to name a few); analysis (705/14.13 - determining discount or incentive effectiveness); and finance or budgets (705/14.17 - financial account, 705/14.21 - based on funds or budget.)

Inventions dealing with re-usable coupons (705/14.22), incentives provided or redeemed during online transactions (705/14.23), incentives based on inventory (14.24), on user history (705.14.25), or on avoiding fraud (705/14.26) are found in the central portion of the schedule.

The most complex area of the Discount or Incentive art is related to frequent usage incentive systems (705/14.27). These systems include frequent flyer miles programs, point reward systems, and other incentives that require an individual to meet predetermined criteria for showing loyalty to a product, merchant, or service. The array of subclasses indented below frequent usage systems incorporate:

• Frequent usage incentive value reconciliation between diverse systems
• On-line clearinghouse
• Multi-merchant loyalty card system
• Awarding of a frequent usage incentive independent of monetary value of a good or service purchased, or distance traveled
• Frequent usage reward other than merchandise, case, or travel
• Method of redeemng a frequent usage reward
  

The bottom of the schedule includes subclasses addressing rebates after a completed purchase (705/14.34; timing of the incentive award or usage (705/14/35); requiring user registration or identification (705/14.36; at a kiosk (705/14.37) or point of sale (705/14.38;) or online discounts or incentives (705/14.39).

As of February 24, 2010, as I am writing this post, USPTO has placed 1,639 patents with an original classification within the discount or incentive area of Class 705. The majority of these patents (75%) are contained within eight of the 30 total subclasses into which USPTO has placed 99 or more patents. The subclasses are:

• 705/14.1 -- Discount or incentive (e.g. coupon, rebate, offer, upsale, etc.)
• 705/14.14 -- Chance discount or incentive
• 705/14.26 -- Avoiding fraud
• 705/14/27 -- Frequent usage incentive system (e.g. frequent flyer miles program, point system, etc.)
• 705/14.35 -- Including timing (i.e limited awarding or usage time constraint)
• 705/14.36 -- Incentive or reward received by requiring registration or ID from user
• 705/14.38 -- At Point of Sale (POS)
• 705/14.39 -- Online discount or incentive

Online discount or incentive (705/14.39) the last subclass in this list, contains 266 patents by far the largest number of any subclasses in the discount or incentive array. If inventors claim art that they believe falls within one of these eight subclasses, they will need to be diligent in searching for prior art to insure that they are applying for a unique invention.

Let us know your thoughts on these business methods patents by sending a comment.

Until next Monday - Mike