Monday, March 15, 2010

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

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