Business Method Monday - Advertising for E-Commerce

The PTO recently published modifications to the financial, business practice or management (former class 705/1) and discounts and advertising (former 705/14) portions of the class 705 schedule. PTO defined many new subclasses, and increasingly granular additional subclasses indented under them (also known as subclass arrays), to capture the wealth of new inventive concepts in these areas. Other significant changes to the class 705 schedule are underway and anticipated to be published in coming months.

Patent number 7,158,942 for an “Internet advertisement system” illustrates some of the changes to former subclass 705/14, which had covered both discounts and advertising. That has now been greatly expanded, renumbered and split into 705/14.1 (Discount or incentive (e.g., coupon, rebate, offer, upsale, etc.)) and its subclasses, and 705/14.4

Claim 2 of the “Internet advertisement system” states that “... at least one partner web site is at least one of a net-game provider, a chat room provider, and an e-commerce provider” – the 'e-commerce provider' clause puts this claim in 705/14.51, and PTO examiners designated this as the original (OR) classification for this patent. Subclass 705/14.51 pertains to advertising During E-commerce (i.e., online transaction). Because this subclass is indented under subclass 705/14.49 (Targeted advertisement), it is a form of targeted advertising. The 705/14.51 definition also specifies that “[t]he term “electronic transaction” covers a transaction wherein the user uses any kind of network having at one end a terminal to execute the transaction consisting of buying or selling goods or services.” Discounts or incentives provided during an electronic transaction could direct an invention claim to subclass 705/14.23 (During E-commerce (i.e., online transaction)), which is higher in the class schedule and could, therefore, be the mandatory classification depending on the claim language.

This patent is interesting in that illustrates several other new subclasses relevant to advertising for e-commerce sites. These classifications are either mandatory (required by the inventive material disclosed in each claim) or discretionary (provide useful additional information for search purposes and can be drawn from the claimed disclosure or other disclosed information such as the abstract, summary of the invention, or drawings) and can be referred to as cross-reference classifications. The cross-references applied by the USPTO to this patent include 705/14.61 and 705/14.73. Targeted advertising Based upon schedule (705/14.61) is captured in claim 4, stating that the invention “provide[s] a plurality of sets of advertisement banners to said at least one partner web site so as to be carried on the web page and switched on the web page as a set at predetermined time periods.” This meets the subclass definition for a “specific time or day that a promotion is going to be available or exposed to the public.”

The second cross-reference mentioned above is for an Online advertisement (705/14.73). The claim 1 phrase “advertisement banner providing means for providing said at least one partner web site with at least one advertisement banner among the plurality of advertisement banners stored in said first database” is covered by the definition for this subclass. The phrase 'banner advertisements' is key here – when encountered it should direct one to consider a 705/14.73 classification. Because of the broad nature of the definition for this subclass, where “a promotion is presented on the World Wide Web”, we might expect that this will be a very common mandatory or cross-reference classification for applications and patents dealing with e-commerce site ads.

The significant changes to the class 705 schedule and definitions make it imperative that inventors and applicants have a good understanding of the new level of detail being applied to classifying business methods patents and patent applications. This includes not only the schedule and definitions, but also the prior art in these new subclasses which USPTO uses, in part, to support or reject proposed new inventions. In previous posts Sean Henderson and I discussed risks associated with misclassification and inadequate prior art searches. Another lesson is . . . do your homework when USPC schedule changes are released.

Until next time . . .

Shine The Klieg Lights On The Patent System

In honor of tonight's Emmy's and the drama of the Troll Tracker case, it's time to drag out the klieg lights and shine the light of day on the whole patent system.

The Troll Tracker case revolves around one lawyer complaining that another lawyer defamed him after lawyer number 1 got the clerk of the court to change the date stamp on a filing because he filed it too early. This resulted in lawyer number 2 posting comments on his Troll Tracker web site. Lawyer number 1 said that the post questions the integrity of this behavior resulting in lawyer number 1's feelings getting hurt and filing a defamation suit against lawyer number 2, aka the Troll Tracker. There was intrigue as a bounty was offered seeking the true identify of the Troll Tracker. Once the identity was disclosed the defamation suit followed. One of the more interesting aspects of this whole adventure it that the parties seem to have forgotten was sought that free speech thing in the Constitution. The klieg light metaphor is about the need for more transparency in the entire patent system.

While getting ready to post my rant I needed to look up the spelling of klieg which lead me down another serrendipitous discovery about the Kliegl brothers.

The Kliegl brothers invented the Klieg light and a the accompanying new noun. Klieg lights are used to create day at night. There isn't a movie set or late night highway construction project that doesn't have Klieg lights. The Kliegl brother's earliest was a patent 708365 filed on August 26, 1901 and issued September 2, 1902 for an Electromedical device for treatment of disease. Like other biomedical engineers that came after them, they appear to have moved on to more profitable ventures inventing many of the advances in theatrical lighting we all take for granted. Aside from the famous spot light, there are footlights, and plugs, and electrical components. The phrase Klieg lights came from the merger of Kliegl and light according to several web citations.

Bring on the light of day...natural or of the klieg variety.

Advertising Image v. Multimedia Object

We have been digging around in the multimedia space lately looking at patent applicatons. This is always a fun place to wander around while watching episodes of Entourage on your IPhone or having a YouTube window open with Michael Jackson videos or laughing babies going.

The multimedia patent world aligns with two of our favorite patent portfolios. The MPEG-LA suite of patents - where the titans of the multimedia revolution cross-licensed all of their patents and battle it out in the marketplace; and the Multimedia Patent Trust's holdings; a small but formidable collection of nine patents that includes six in the MPEG space and three in the speech space. Our favorite in the MPT collection is the Netravali patent 4,383,272 which has to do with updating pixels to distinguish moving areas of a picture. From a 50,000 foot view, only compressing the parts of the picture that change to save space. A lot of people think this is a seminal invention in the evolution of HDTV. The patent applications we look at here are made possible by the techiques defined by Mr. Netravali and his co-inventor John D. Robbins.

The first thing we did when we started looking at the patent applications was to define multimedia. One of the sources we were working with defined it as "a transmission that combines media of communication - text, and graphics and sound, etc." That seemed clear enough - if it has pictures, text, and makes noise it's multimedia. No requirement for movement.

One of the published patents we came across in the multimedia space was 10/112,519 - Method and System for Providing Intelligent Advertisement Placement in a Motion Picture. The application describes an invention for embedding advertisements into motion picture content using personalized data. The individual inventors describe a process for swapping out objects in the motion picture with advertising images based on personalize data. I get Diet Coke, you get Mountain Dew, if you're in Louisville, Kentucky or Jeffersonville, Indiana you get Big Red - America's #1 Red Soda. (A shout out to our friends at the Census Bureau.)

Throughout the application the inventors use the phrase "motion picture". So, what's a motion picture? According to the web and the old school paper dictionary, a motion picture is a "movie," a form of entertainment that enacts a story by sound and a sequence of images giving the illusion of continuous movement. Another definition says a motion picture is a length of film with or without recorded sound bearing a sequence of images creating the illusion of movement. OK. So, a movie is a motion picture? It depends. Merriam-Webster says it's a series of pictures projected on a screen in rapid succession with objects shown in successive positions slightly changed to produce the optical effect of a continuous picture in which the objects move. This application was filed in March 2002 and is a continuation in part of an application filed in January 2000.

Fast forward to July of 2006 when patent application number 11/486,683 - System for Creating Dynamically Personalized Media was filed. The inventors describe a multi-media object management system to manage the delivery of product placements in a multi-media program. They describe modifying the content in which the multi-media object locations that can be brokered are replaced with content defined by advertisers based on demographics or other user attributes. The patent teaches a multi-media object location comprising "a spatial and temporal site." (What??) The specification talks about selling the multi-media object locations to advertisers. We like the figures. Nice, easy to understand pictures. The application seems a little heavy with obscure vocabulary no doubt added to help insure the widest possible coverage if and when a patent is granted.

Time for a little clarity. Is a multi-media object an advertising image or is it some precursor thing where you place an advertisig image? What about this spatial and temporal thing? Is this the space where the advertising image goes and an event that takes place over time kind of like the guy drinking the soda in the picture above? You have to ask yourself what words will the examiner use to do their own prior art search? What will the phrase multimedia object return? A multimedia object comes from the world of object oriented programming, MPEG, and the graphics world.

One application discusses product placement, the other discusses advertising. Isn't product placement advertising? Yep. Product placement is defined as an advertising technique used by companies to subtly promote their products; a form of advertising where branded goods or services are placed in context usually devoid of ads, such as movies, the story line of television shows or news programs. (We were good until the news programs part, notice all the anchors tweet from their Macs.)

This is a vocabulary conundrum. But you have to ask yourself, what is the impact of the word choices of the inventors? Will the choice of words in the claims and description of the invention make a difference? What happens when these applications hit USPTO? USPTO has to figure out what to do with the patent applications and which examiners are going to look at them. Should you expect that the content would drive them to the same class?

The motion picture advertising patent is classified in class 725/34. (In case you are wondering, the first boldfaced class on a published patent application is the Primary classification and drives which Group Art Unit at PTO is going to examine your patent application.) The multi-media object product placement patent shows class 705/14 as the the primary class.

Which means?

The two independent inventors who wrote about motion pictures and advertising had their patent classified in class 725/34 a class for interactive video distribution systems, PROGRAM, MESSAGE, OR COMMERCIAL INSERTION OR SUBSTITUTION: Subject matter comprising means or steps for inserting or substituting a video program or other information beyond the control of a viewer, television, for operator interfaces for video sequencing or editing specific to individual user or household: subject matter comprising means or steps for conveying user-specific data. JACKPOT!!

705/14 falls under Data processing: Financial, Business Practice, Management, or Cost/Price Determination - Distribution and redemption of coupon, or inventive or promotion programs. The class definition says, "Note - A display or advertising system is included herein." A display or advertising system? Perplexing - is this a method, a business practice, a process - I guess we'll see.

Patent classification remains an illusive art and USPTO changes its mind along the way but sometimes plain language works best at getting your patent where you want it to go. The examiners are probably happy to have something that helps them find the invention in the blur of words. We have a motion picture where we replace images with advertising images selected based on characteristics of the viewer. Then we have a multi-media object consisting of a spatial or temporal site. The space and time continuum - isn't that what movies are? As another testament to the art of a well crafted patent application. The independent inventors in the motion picture advertising application started their claims by saying: "What is claimed is:" The multi-media object inventors started their claims with: "What is new and desired to be protected by Letters Patent of the United States is."

There is something to be said for clarity and simplicity of language.

Keyword Guessing Machine

An invention can’t be described in the 10 words supported by the leading internet search engines. Is a series of words and a few “ands”, and “ors” enough to describe the state of the art in any technology?   How do you find the terms to describe innovations over a 20 or 30 year time horizon?  What words do you need to know to get good results?  For most intellectual property research activities, conventional search becomes a Keyword Guessing Machine. 

The Keyword Guessing Machine takes you down the tedious path from one search to the next, keyword to keyword, combining keywords with Boolean operators, ands, ors, and nots, to try to find the right art.  The quality of the results is contingent on the searcher’s understanding of the keywords and vocabulary associated with the art.  A series of   Boolean operators are needed to build searches that define complex ideas. 

Searches are complicated by the need to look across time and address a constantly evolving vocabulary used to describe inventive art.   Keyword and full text searching do not compensate for the evolution in the lexicon used to describe a field of research and often have limited mechanisms to understand all of the concepts embodied by a single term. Researchers need to execute multiple queries using the vocabulary of the era or weed out search results that contain the same words but don’t embody the right concept. 

Conventional search dilutes the power of the terms and its underlying concepts. Associations become overused losing important related concepts or the meaning of search words over time.  

Search paralysis sets in when combinations of words yield no new or usable results.  Users then start again with a new set of terms.  The more novel or complex the idea, the harder it is to get meaningful results or to follow a thread of subject matter the way an inventor, attorney, or patent professional thinks about and defines their art.

If you look at the May 6th posting for the original Cybercash electronic commerce patent, it's hard to imagine that meaningful prior art could be found using the search terms defined by the examiner or that a researcher would know the right combination of words to find the appropriate art.  Keyword searching when looking for prior art if difficult, time consuming, and very frustrating.
 

A Fundamental Intellectual Property Challenge

Digital scientific literature is accelerating inventive activity and faster development of emerging technology.

There aren’t enough Subject Matter Experts to find prior art for new and emerging technology.

A new search paradigm is needed to support expansion of inventive activity.