IP PORTFOLIO MANAGEMENT
How to develop and manage one US Patent
Peter Tong www.ipventure.com
Patent: A global asset class
• Yahoo’s potential sale to Verizon
• Huawei v Samsung in May, and Samsung v Huawei in July
• In June, Shenzhen Baili v Apple
• As you are filing an application
• After filing
• After receiving a notice of allowance
• Correct mistakes
How to develop and manage one US Patent
As you are filing an application
• Inventorship
• Provisional application
• Be meticulous
• Ways to implement your invention
• Types of claims
Be meticulous: Directional Sound
Be meticulous
• The frequency of the ultrasonic signals are at 40kHz.
• As an example, the ultrasonic signals are at 40 kHz. In other embodiments, the frequencies of the ultrasonic signals are higher, such as between 100 kHz to 1 MHz….
Ways to implement your invention
• a pair of prescription glasses with a touch-sensitive input surface
• sunglasses, fit-over glasses, safety glasses,
goggles, and headsets
Eyewear with touch-sensitive input surfaces
Types of claims: Cloud computing for learning
Types of claims
1. A computing apparatus comprising: a first computing device … to: receive a request from a user using a second computing device for learning content ... receive a request from an entity using a third computing device for materials on the user ...
2. A computing apparatus as recited in claim 1, wherein the content includes materials on a product of the entity.
After filing
• New ideas • Prosecuting the application
After receiving a notice of allowance
• Claims • Continuation
Continuation: Hands-free Text Messaging
Continuation
A method for facilitating text messaging … comprising: receiving an incoming text message … wirelessly; converting the incoming text message to an incoming audio message; playing the incoming audio message … via a head-set; … A method for facilitating text messaging … comprising: receiving an incoming text message … wirelessly; converting the incoming text message to an incoming audio message; playing the incoming audio message … via a speaker; …
Mistakes in the patent
• PTO mistakes • Your mistakes
Your mistakes: Eyewear with heart-rate monitor
Certificate of correction
A number of techniques have been described on stabing stabilizing the wire or the clip relative to the glasses. In one embodiment, the glasses could also be stabilized by a strap….
Reissue
• Prosecution options • Broaden reissue
Broaden reissue: Save Battery
Broaden reissue: Save Battery
A position acquisition device … comprising: a display …; a position detection unit …; a battery …; and a controller … determining whether to get position … based on a motion of the device and a battery level of the battery …. A position acquisition device … comprising: a position detection unit …; a battery …; and a controller … determining whether to get position … based on a motion of the device and a battery level of the battery ….
Supplemental Examination
• A substantial new question of patentability
• Pre-litigation cleansing
• As you are filing an application
• After filing
• After receiving a notice of allowance
• Correct mistakes
How to develop and manage one US Patent
IP PORTFOLIO MANAGEMENT
How to develop and manage one US Patent
Peter Tong
www.ipventure.com [email protected]