Collaborative Work or Is It? - Business Method MondayFor this post, I'll investigate two examples of art that USPTO has reclassified into 705/300, Co

For this post, I'll investigate two examples of art that USPTO has reclassified into 705/300, Collaborative creation of a product or a service. This is one of the new subclasses Sean touched on in his March 29, 2010 post.

As a refresher, art classified in 705/300 must be ". . . drawn to a computerized arrangement for initial conceptual development, through cooperation between plural parties, (e.g., brainstorming, idea development, etc.), of a commodity or of work that can be performed for another."

As of the day that I'm writing this (April 30), USPTO has not placed any issued patents into this class (in all likelihood because they are still reclassifying the patents that will eventually end up there), as shown by running a search in the USPTO Full Text and Image Database (search criterion CCL/705/300; alternatively, click on the 'P' icon adjacent to 705/300 in the Manual of Classification). Forty-one (41) applications have been placed here (using the 'P' icon link).

Application 20100094761, "Method for User Driven Product Design and Marketing", is for collaborative product development using ad-hoc user groups. Claim 1 provides for ". . . selecting a product theme as a request for proposals to a plurality of individuals enabling said individuals to edit some, all, or none of said submissions and submit the resulting product as a new product submission . . ." This is a good example of the art defined by the definition summarized above. Dependent claim 3 additionally emphasizes collaboration in product theme selection ". . . to be conducted in any manner by some plurality of individuals including an unrelated third party, authors of said request for proposals, and the plurality of individuals responding to the request for proposals."

Application 20070239464, "Networked System and Method for Formulating, Processing and Managing Challenges and Solutions", provides for formulating, processing and managing challenges and solutions, and has been classified by USPTO as 705/300, with no cross-reference classifications. This application appears to be a good example of conflicts in the new 705/300-348 portion of the business methods schedule with subclasses higher in the schedule. Both Sean & I alluded to these conflicts in our recently completed 5-part series.

Claim 1 of this application allows a user ". . . to select whether to create a new challenge or work with an existing challenge that has previously been stored . . ." So far, so good -- this appears to be captured by the 705/300 definition. However, reading further in the claim, a series of interface prompts are provided to the user, one of those prompts being " . . . a resources required prompt . . .", and another being ". . . a potential available resources prompt . . ." The claim concludes by ". . . receiving user input in response to the prompts . . . " The resources referred to are defined in paragraph 28 of the Summary of the Invention as ". . . human resources, equipments, laboratory, computer processing, storage capacity, or other resources likely to be required to address the challenge." These resources, and their allocation as defined in claim 1, are clearly captured by 705/8 Allocating resources or scheduling for an administrative function, which is defined as ". . . the distribution of resources or for scheduling in a business or commercial environment." Thus, this application should have been placed by USPTO in 705/8, with a cross-reference to 705/300.

Conflicts within schedules subject to reclassification projects will continue until the USPTO takes a more comprehensive approach to reviewing entire class schedules with a goal of eliminating internal conflicts, and ensures adequate and accurate communication among all the parties involved (project managers, examiners and classification staff across all the affected General Art Units, contracting officers, and contractors). Inventors and assignees assume the risk that their inventions will not be examined against the proper art.

Today's post is by Mike Bowman.

Business Methods Monday - Digital Rights

Business Methods Monday: Part 5, Class 705 Schedule Changes, Classification Order 1892

This installment to “Business Methods Monday” is part 5 of a 5 part series covering changes to Class 705 under Classification Order 1892. As noted previously, this revised Schedule was 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 under discussed here. This section of the Schedule is included below for reference. As a reminder, anything classified in Class 705 must involve apparatus or method applied to data processing operations applied to some type of business processes.

For the complete Schedule and Definitions for 300 through 348, use this link to get to the Classification Order. http://www.uspto.gov/patents/resources/classification/orders/1892.pdf. As the USPTO has now updated their website Classification Main Menu, you can access the complete Class 705 Schedule and Definitions, which includes the 300 through 348 arrays from the Classification Order by use of this link. http://www.uspto.gov/web/patents/classification/uspc705/sched705.htm.

901 DIGITAL RIGHTS MANAGEMENT

902 . Licensing digital content

903 .. Adding plural layer of rights or limitations by other than the original producer

904 . Usage protection of distributed files

905 .. Hardware usage protection

906 .. Requiring a supplemental attachment or input (e.g., dongle, etc.) to open

907 ... Specific computer ID (e.g., serial number, configuration, etc.)

908 .. Software or content usage protection

909 .. Usage charge determination

910 ... Including third party for collecting or distributing payment (e.g., clearing house, etc.)

911 . Copy protection or prevention

912 .. Having origin or program ID

First, from the “Handbook of Classification”, a Discretionary classification is considered “secondary classifications based on non-inventive, but otherwise valuable, information are discretionary”. This is generally based on detail that is not directly claimed, but is disclosed in the Abstract, Description, Figures, etc., though I have seen cases where Discretionary classification is wisely applied for methodology, claim or otherwise, that one versed in the art knows is being employed and the listing will therefore be of value for future search purposes.

901 “DIGITAL RIGHTS MANAGEMENT” is defined as “Subject matter drawn to a system of information technology components (hardware and software) and services designed to distribute and control the rights to intellectual property created or reproduced in digital form for distribution online or via other digital media, in conjunction with corresponding law, policy, and business models.” Everything below this is finer detail applied to the distribution, protection of rights and methodology associated with revenue from the distribution. I am only going to hit the high points for this as the Definitions are pretty clear regarding content.

902 “Licensing digital content”, 904 “Usage protection of distributed files” covers various methodologies used to ensure that a user has been granted usage rights or means limiting access to specific users or devices by means of a required license key. Examples of this would be a license key for use of software, a key assigned to a server that is unique to a remote user allowing use of specific software or data when the user or the user’s device provided the key. In the case of the latter, this could be a key assigned to a removable device, see 906, which allows access to licensed software by the system the removable device is plugged into. In any of these cases, this could be for a determined time period. 909 and 910 provide for means for calculation charges for the data or software usage and means for distribution of the funds collected, here by a third party on behalf of the to the data or software owner. In 911” Copy protection or prevention”, this is means for limiting the number of times data can be copied.

As noted by both Mike and myself, there are serious Classification Order 1892 conflicts with subject matter higher in the 705 Schedule, most notably with 705/7 and 705/8. 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. As noted previously, the conflicts with both 705/7 and 705/8 were pointed out during the Classification Order 1892 project to the USPTO, and again in relationship to another 705 Classification Order project, which as yet, has not been published.

For the record, the USPTO Examiners consider subject matter that belongs in 705/7 to be evaluation of business operations, i.e., research or analysis, which is applied to management, planning, organizing, directing, decision making or controlling of an enterprise. 705/8 subject matter is considered any of those operations of 705/7 that are further applied to business resource planning, scheduling, allocation, distribute or routing. Resources of a business are any asset or commodity used by or made by a business, such as staff including contracted staff, business capital and intellectual property such as patents, trademarks, and trade secrets, then hard assets, such as computers, servers, printers, office supplies, manufacturing tooling, inventory goods, inventory or product distribution systems, transportation assets, and finally, the manufactured products or services of a business. As noted in an earlier Blog, the above is based on direct conversations with various Class 705 Examiners regarding what they consider 705/7 and 705/8 subject matter, which is backed up by USPTO Patents and Applications classification in 705/7 and 705/8. The conflicts noted with both 705/7 and 705/8 were pointed out during the Classification Order 1892 project to the USPTO, and later still, in relationship to another 705 Classification Order project, which as noted, has not been published.

For the most of the subject matter Mike and I have discuss in the 300 through 348 arrays, the Primary or Original classification will stop somewhere in the 705/7 array. If there is subject matter that additionally claims detail in the 300 through 348 arrays, the applicable Subclass can only be listed as a Discretionary classification listing, assuming one does not ignore the USPTO’s own “Handbook of Classification” rules.

What needs to happen to fix the conflicts we have noted?

Well, at some point in time, the USPTO needs to restructure the entire Class 705 Schedule as a whole. According to the “Handbook of Classification”, the requirement is that; “subclasses are arranged from top-to-bottom in order of decreasing complexity and comprehensiveness”. That is not presently the case with the Class 705 Schedule as it exists. As the USPTO is operating in the red just like the rest of the US government, it is anyone’s guess as to when this may happen, if ever.

A piecemeal process is fine, the best case being starting with the proper top-to-bottom order of decreasing complexity and comprehensiveness in the Schedule to begin with. If that is hopefully the case, and even if it is not, procedurally you must understand the entire existing Class Schedule and each of the existing Subclass Definitions for allowed subject matter, either higher or lower in the Class that is not a part of the specific Classification Order project. If conflicts exist with any existing Subclass Definitions, the Classification Order Subclass and Definition under consideration must be revised, so that the conflict does not exist, and barring that, the considered subject matter is just flat out not allowed under the Classification Order. While undesirable for obvious reasons, if there are multiple Classification Order projects are underway within the same Class, then everyone on each of these projects must be in communication with one another and in complete agreement that there are no Subclass subject matter conflicts relative to each of the in-process Classification Order projects relative to any proposed Subclasses and Definitions and existing Subclass Definitions. Procedurally, when multiple Classification Order projects are in-process for a Class, the individual USPTO project managers for each project are responsible for oversight adherence to procedures, QA processes and required communication.

While the internal business procedures do actually exist in the USPTO for Classification Orders, Class Schedule structure, and classification based on claimed subject matter, there is also evidence of that there is no consistent adherence to, or enforcement of these internal business procedures, which is based in the condition of various Classes and further based on actual Patents and Patent Applications classifications Mike and I have reviewed and reclassified in this and other Classification Order projects. Documents appear to be placed wherever one seems to want them to be placed, subject matter not withstanding. The issues of database integrity and search-ability are obvious; documents that should be searched in the Patent Application review process are not where the claimed subject matter collection of prior art actually resides in the various Class Schedules. I have seen multiple cases where the Examiner never searched the Subclass arrays where the clearly claimed subject matter exist, and that is based on review of the Examiner’s published search history data. Aside from the latter calling into serious question the validity of the issued Patent, which was also misclassified, it compounds the problem for the next Examiner’s doing future examination reviews and searches.

Mike and I hope that those following this Blog series come away with a better understanding of Class 705 in general. Some of what has been presented should provoke some very serious thought for anyone involved in the process of applying for a Patent Application, and most particularly for those of you who hold an issued Patent or are involved in representing clients who hold an issued Patent.

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

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

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.

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

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

Where's My Application and Other Classification Insights

Today's inaugural Business Methods Monday post comes from Sean Henderson. Sean shares some of his insight into the US Patent Classification system and the risks to the inventor who doesn't understand how the patent classification drives where your application is examined. As noted in an earlier post, Sean and his partner in crime, Mike Bowman have reclassified over 11,000 patents and patent applications. The quality standard for their work required a accuracy score of 80% or better. Their work was in the 90 percentile range based on the discriminating review by USPTO Examiners. In short, these guys have an exceptional feel for the subject matter they have reviewed and where it belongs.

Here is Sean's first post.

By now everyone in DC/Virginia has hopefully dug out from the snow dump, amount dependent based on the track of the two colliding fronts in your area. Unlike Vermont, my home of 14 years, DC/Virginia does not have the snow removal equipment...nor can it be justified really, for what was modeled as a 15 to 25 year snowfall event...so you just wait it out until the roads are cleared. Folks here, for the most part, don't run real snow tires on vehicles...nor seem to have figured out this whole stopping and speed thing versus reduced traction thing. That makes driving an interesting spectator sport...so long as you are not in the trajectory path of something you would rather avoid.

Michael Bowman and I have been asked to share some observations and mounting concerns that we have encountered, that anyone considering filing a patent application needs to aware of and seriously consider when preparing a patent application. The issues we discuss here are also valid and may have a more adverse impact for those of you whom have been issued what you believe to be a valid patent.

To date, Mike and I have analyzed and reclassified approximately 11,000 published patent applications and patents in Class 705 under a USPTO contract, plus many more that belong in what are loosely know as the computer based technology Classes, such as Class 700, 707, 709, 726, 718 etc., plus some in the mechanical systems and semiconductor manufacturing related Classes.

Reclassification projects at USPTO were driven by a need to provide additional subclass detail within one or more subclass arrays. The goal is to provide finer search granularity detail and to add subclasses for the new art being invented. Once the revised subclass schedule is agreed to, all documents with a Primary or Original Classifications within the one or more subclass arrays must be reclassified and assigned to the proper new subclass. (The Primary Classification is the class/subclass pair that appears in bold on the [52] U.S. Cl. section of a patent application. The Original Classification is the same bold class/subclass pair that appears on a granted patent.)

To classify patent applications and granted patents, each individual claim is classified based on the subject matter it discloses and assigned to a specific class and subclass where that subject matter resides. During classification cross-references to any other applicable class and subclass that apply, for future prior art search purposes are added. Classification of patent applications is done initially by USPTO Classifiers or contracted Classifiers. The Examiner may reclassify the application over the course of the examination, One of the most important things to know is that the primary classification assigned to a patent application as it drives which Group Art Unit at USPTO will examine the patent. For granted patents, it determines who is responsible for the care and feeding of those patents for the purposes of prior art research. The classification determines who will be examining your patent application and where you patent is assigned for the purposes of prior art and validity research.

Here is the problem…a significant number of the published patent applications and patents are misclassified. How significant? Well, wishing to be polite about this…no grading on the curve allowed…an “F” would be a very generous score. Worse, some of the patent applications and patents should never have been classified in the class selected to begin with, much less in the subclass. The real issue of concern is that the classifications and patent bibliography search history, the class/sub class on the patent, is where the Examiner will search for prior art. In many cases it would appear that no search was done for prior art in the classes and/or subclasses where similar claimed subject matter is classified. The Examiner and patent researchers may not always find the right art in the appropriate class. Acknowledging that the Examiner has a full plate, there also seems to be a lack detailed understanding by the Examiners regarding other USPC classes and subclasses outside of their Group Art Unit that include the same or related subject matter. In other cases the Examiner might not have understood what was being claimed which can also result in the patent being classified in an inappropriate classification.

There are some serious implications here. Let’s start by considering what I hope is apparent at this point to those of you considering filing a Patent Application. First, you absolutely need to do your own prior art search, or hire someone with the knowledge in the art to do that for you. There are lots of tools to help you do your searches.

At Coronado Group we use Cognition IP by Coronado Group Ltd, which employs a concept search in conjunction with the US and International patent classification schedules to help you understand where your patent application is likely to wind up when it is examined by USPTO. Using Cognition IP’s copy, paste, search interface, you can dump just the Abstract, any or all the claims, the description or an invention disclosure, or all of the above in as the “concept” to be searched. This returns the patents that are the closest to the text you entered to do your search. A single search looks across the whole published USPTO patent database. The search executes regardless of the subject matter allowing you to search outside your own subject matter expertise. To refine your search, you can add filters to the concept, including Boolean strings to help you do a comprehensive search before you finish writing your claims and filing your application.

Regardless of the tools you use, you need to do the search prior to application filing to determine if there are any published patent applications and patents, that predate and invalidate a part of, or all of your claims. And, you need to look across all of the art, not just subject matter within your comfort zone. There can be prior art in classes and subclasses where one would never expect to find the subject matter…and you need to be looking in all these areas.

Next there are implications here to consider for anyone who holds an issued Patent…or for that matter, for those who have a license agreement, or are paying royalties for the use of patented technology. You also want to be sure that the patents you are licensing are the definitive art covering your technology and products.

During my years working for IBM designing automated systems for their 200 and 300 millimeter ASIC semiconductor manufacturing lines, prior art was diligently searched any and all related art Applications or Patents that touched on what we were building on, were listed in the Application Disclosure. Basically, the research was done for the Examiner and you were directing the Examiner to all the know classes and subclasses that should be researched with the additional references to other published documents of interest. Said another way, by the time we were done, barring someone filing just ahead of us, or there being an unknown published document that negated claims, it was pretty well known up front that the art was indeed unique and should result in a issued Patent. This helped us avoid expensive litigation as well.

Being aware of how the US Patent Classification system works during the preparation and prosecution of your patent application will help insure that your invention is on track to be patented and that granted patents are only given for novel and non-obvious inventions.

We hope to continue sharing our patent experiences and sharing our insight on the risks and challenges of prosecuting a patent application as seen from the vantage point of having read and reclassified so many patents.