Inside the USPTO: A Guide to the Patenting Process April 30, 2008
Posted by chetan in : AORTA, M&A, Mobile Content, Mergers and Acquisitions, International Trade, Mobile Applications, Worldwide Wireless Market, Mobile Ecosystem, Wireless Value Chain, 4G, Patents, Intellectual Property, IP, Patent Strategy, IP Strategy , add a commentInside the USPTO: A Guide to the Patenting Process
by Carlos Villamar and Chetan Sharma
http://www.chetansharma.com/insidetheuspto.htm
Note: We have an integrated approach to strategy as we strongly believe that taking market research, business, technology, and intellectual property inputs into strategic initiatives is essential in obtaining a long-term sustainable competitive advantage in the industry. To further the dialogue on the subject, we will be publishing several articles, white papers, books, and blog posts over the course of next few months. This white paper is to help entrepreneurs and inventors understand the patenting process.
This white paper was a collaboration with Carlos Villamar, Partner, Roberts Mlotkowski Safran & Cole. Carlos is a patent attorney who has also worked as a patent examiner at the USPTO.
Abstract
Patents are a key corporate asset that can give the inventor and the company an invaluable tool to protect and commercialize inventions. The process of obtaining a patent is an important one – from start to finish. Beginning with patent strategy, due-diligence and patent search through the United States Patent Office (USPTO) process to finally getting the grant, one needs to have a good understanding of each step. This increases the probability of success by removing uncertainty from the process. Inside the USPTO: A guide to the patenting process takes a detailed look at the ideation and the patent process, specifically, how patent applications flow through the USPTO. By having a good grasp of the intermediate steps and the various decision points associated with each of them, the paper discusses how entrepreneurs and inventors can maximize their chances of securing a patent.
Introduction
We live in a knowledge economy and Intellectual Property is a key asset in this new ecosystem. Patents are one of the essential elements to creating barriers to entry for rivals, building credibility and confidence of investors, customers, partners, and employees, providing clarity as to the property ownership, demanding leverage from the industry, and for generating revenue from licensing and sale.
The knowledge economy thrives and sustains on ideas and competitive advantage based on intellectual property. For individuals, the prestige associated with being an innovator and “first to secure” patents in a given field motivates them to be creative and innovative. Entrepreneurs, engineers, and inventors can benefit from understanding how to secure and maintain their intellectual property rights. This paper discusses the important steps in designing, filing, procuring, and defending your patent rights.
The following diagram illustrates at a high-level the patenting process and important considerations in the decision flow chart. The flow chart is discussed in detail in the subsequent sections.
Table of Contents
| Abstract | 3 |
| Introduction | 4 |
| Pre filing due diligence | 6 |
| Patent preparation | 9 |
| USPTO filing | 11 |
| USPTO examination | 13 |
| After approval | 16 |
| Conclusions and Recommendations | 17 |
Download the full white paper here.
Your feedback is always welcome.
Coming Soon: Inside the USPTO - A guide to the patenting process April 29, 2008
Posted by chetan in : Patents, Intellectual Property, IP, Patent Strategy, IP Strategy , add a comment
Abstract
Patents are a key corporate asset that can give the inventor and the company an invaluable tool to protect and commercialize the inventions. The process of obtaining a patent is an important one – from start to finish. Beginning with patent strategy, due-diligence and patent search through the United States Patent Office (USPTO) process to finally getting the grant, one needs to have a good understanding of each step to increase the probability of success and thus remove uncertainty from the process. Inside the USPTO: A guide to the patenting process takes a look the ideation and the patent process from start to finish, specifically, how patent applications flow through the USPTO. By having a good grasp of the intermediate steps and the various decision points associated with each of them, the paper discusses how entrepreneurs and inventors can maximize their chances of securing a patent.
Inside the USPTO: An In-Depth look at the art of securing a patent April 18, 2008
Posted by chetan in : Patents, Intellectual Property, IP, Patent Strategy, IP Strategy , add a comment
As some of you know, I work extensively in the Intellectual Property Space. Over the past few weeks, I have been collaborating with a good friend and colleague of mine - Carlos Villamar, Partner at Roberts Mlotkowski Safran & Cole in Washington DC on a paper that takes an in-depth look at the processes and strategies required to secure a patent. In his past life, Carlos was a patent examiner with the USPTO so his insights have been very valuable.
We will be releasing the paper in early May. Stay Tuned.
Nortel and Vonage settle December 31, 2007
Posted by chetan in : Patents , add a commentAnother patent lawsuit settlement, 4th in a row. Who is next? Companies without any IP strategy run the risk of thrown around like a football. Vonage is a perfect case study. They are draining their resources into legal fights whereas it would have been more prudent and cheaper to devise an IP strategy up front.
Samsung receives most design patents in 2007 December 30, 2007
Posted by chetan in : Patents , add a commentIn 2007, Samsung Electronics received over 550 design patents — the most ever issued to a single company in one year. Sony holds the most design patents, and is followed closely by Nike
New Whitepaper: What is your Patent Portfolio Quotient? July 17, 2007
Posted by chetan in : Carriers, Security, 3G, Mobile Advertising, US Wireless Market, Mobile Content, International Trade, Indian Wireless market, Mobile Applications, Worldwide Wireless Market, Mobile Ecosystem, Wireless Value Chain, 4G, Patents , 2 commentshttp://www.chetansharma.com/patentportfolioquotient.htm
Over the last twenty years, the global economy has slowly transformed into a vibrant knowledge economy. With reduced barriers to entry and pervasive globalization, a small company in a developing world can compete for its share on the world stage. The invention of new ideas and products remains an integral part of the global economy and the commercial food chain. Patents are an invaluable tool to protect and commercialize the inventions. They are essential to creating the barriers to entry for rivals. They are needed for building the credibility and the confidence of investors, customers, partners, and employees. They are required for providing clarity as to the property ownership, for demanding leverage from the industry, and for generating sustainable revenue from licensing and sale.
In the global marketplace, amongst all the other competitive factors, innovation matters the most and patents can help deliver the competitive edge required to remain viable. Inventors who used to see patents solely as part of their defensive strategy (and to alleviate any future litigation risks) to prevent competitors encroach their space are looking to be more aggressive with their inventions to make patents part of their offensive and licensing strategy. To ensure the financial security of the patents, some companies are embedding their IP programs as part of their Knowledge Management and Risk Management initiatives where they capture know-how, harvest IP and ingrain IP into their product development lifecycles.
Patents will continue to grow in their contribution as a key corporate asset. Since much value is associated with patents, the industry need better tools to assess and to understand the valuation and the strength of the patent portfolios. This paper will introduce the methodology of Patent Portfolio Quotient™ (PPQ) to measure performance of your patent program and portfolio that enables a Return on Investment (ROI) driven approach. PPQ measures the quality of the patent portfolio and the patent program with clear policies and procedures as it relates to the lifecycle of patents within an organization from innovation to licensing or sale. We will review the importance of patents as a tool for competitiveness and their value to a corporation. Next, we will address - why a patent program should be integrated with product development lifecycle to extract the maximum value from their intellectual property assets. Finally, the paper will introduce the basics of PPQ and discuss what inventors and companies can do to increase their PPQ.
Please download the complete paper - PDF (22 pages, 1MB)
Table of Contents
Introduction 2
Patents as a tool for Competitiveness 4
Analyzing Patent Portfolio Quotient or PPQ 12
Patent Program Strategy 15
Integration of IP Strategy with Product Development 17
Recommendations and Conclusions 19
Your comments are always welcome.
Chetan
CTIA, MES, MECCA Fall 2006 Roundup September 18, 2006
Posted by chetan in : AORTA, Infrastructure, Carriers, Middleware, Enterprise Mobility, Security, Federal, General, M&A, 3G, Partnership, Devices, Mobile Advertising, US Wireless Market, Mobile Content, Mobile Entertainment, Mergers and Acquisitions, Location based Services, MVNO, Mobile Gaming, Gaming, Networks, ARPU, Mobile TV, Mobile Applications, Smart Phone, Worldwide Wireless Market, Mobile Usability, Mobile Ecosystem, Microsoft Mobile, Speech Recognition, Mobile Search, Wireless Value Chain, 4G, Patents, CTIA , 2 comments
Los Angeles was the venue for the annual CTIA Wireless IT and Entertainment 2006. Pre-show events included Mobile Entertainment Summit (Chetan Sharma Consulting was a research partner) and MECCA. This note summarizes the observations and commentary from the above shows.
First let’s do the numbers. Just before CTIA, M:Metrics released some numbers from their most recent survey. Amongst the western nations, US has just over 5% 3G penetration with UK leading the way at 11.4%. Spain and France are at 8.9% and 7.9% respectively. In the US, Verizon is ahead with over 17% 3G subscriber penetration followed by Sprint at 6%. CTIA also released their survey numbers. 12.5 billion messages in the month of June 2006, up 71% from 7.3 billion messages in June 2005. There was 70% growth in service data revenues. You probably already knew most of the above after reading our research notes here and here, weeks and months ahead of the mainstream media.
MES and MECCA. The central theme from both the shows was community and advertising. The buzz shifted from “Mobile Search”, “Mobile TV”, and “IMS” during the last couple of shows to “Mobile Advertising”. The prospective lifecycle of product development goes like this – build community (whether it is around user generated content, games, artists, bands or other) and monetize the community by advertising. The permutation and combination of the business models are: free application and/or free content, subscription, earn credits for watching ads, more credits for feedback/surveys, etc. Companies who are able to build a large mobile community (at least 5-10M active users) and gather some specific demographic data become hot property of the moment. It is important to note that the mindset for an exit strategy for companies in the social media and user generated content space has changed a bit. Instead of getting acquired by software or computing companies like Google and Yahoo (yes, yes, they are media companies as well) to traditional Media companies like FOX and HBO. This was quite apparent in a number of discussions I had with the executives from new media content companies.
Enterprise focus, Finally!. I have been involved in the mobile enterprise space since 1999 and have been coming to the CTIA for a number of years. The fall show is supposedly about dual personalities of Entertainment and Enterprise. For the first time it felt that the Enterprise side was given its due respect and was on an equal footing to its sibling personality - the glamorous, the attention-seeking “Entertainment”. CTIA started the conference with an Enterprise panel discussion (of course after the surprise Governator keynote). Though the discussion was too high-level to provide any key insights, CIOs confirmed what is well known now that the spending on wireless-data related projects is going up significantly. A surprise revelation was that China’s growth in enterprise solution is among the highest in the world. It is all about productivity and ROI. Companies are also looking to outsource their IT operations related to wireless devices. Handset guys are coming out with Enterprise targeted devices though we are still in the very early stage development of the cycle. Throwing an email client on the device doesn’t make it an enterprise device. Email client is a given in all new handsets now. When will we start seeing embedded enterprise apps? Mobile web services clients and frameworks?
It’s an Ad, Ad, Ad, Ad world. Mobile advertising is clearly the buzz of the moment. Everyone wants to build an ad-supported model and also build their own ad network. Currently, most of the talk is around simple rotation of ads or tying ads to the category the user is interacting with. Not much attention on demographics, profiles, or context. That’s where the “big” impact and value will come into play. Currently, carriers sit on goldmine of user data that is begging to be leveraged for enhancing user experience. Unexpectedly, they sit on a big opportunity that will start to change the advertising industry over the course of the next 5 years. To see where things are going, we just need to look at trends in Japan and Korea. It was interesting that in almost all of the mobile advertising discussions, nobody talked about the elephant that was not in the room - Google, trendsetter in monetizing content. Also, missing were the agencies and their perspective. I have looked at this space quite a bit over the last two years and while agencies are excited about the prospect, they are not ready to jump yet. It will be quite entertaining to watch the new-generation media companies compete/collaborate with the carriers. For the next 3 years or so, carriers will still have an upper hand and if they execute it right, could dominate the space for a long time to come. People also talked about different types of ads – IVR, Voice, Interstitials, banner, in-game, before-and-after, etc. Of course, click-to-call or click-to-action are going to be an especially important ingredient of this game. Sprint Nextel and Enpocket announced their mobile advertising program. Amp’D also announced mobile advertising plans with Rhythm New Media. Bango launched its Ad initiative as well. Virgin mobile’s Ad program “Earn Airtime in Your Spare Time” is innovative. They are truly in tune with their subscribers.
FMC. Kyocera had some trial handsets that supported WiFi/VoWiFi. One could theoretically make VoIP calls and download content over WiFi but will carriers allow it and how long will they resist. Non-traditional carriers like the MVNOs and the cable operators are very interested in exploring bundling offers. Sprint also announced EV-DO Rev A data cards that provide data rates up to 400-600kpbs. Cingular announced that they will have a majority of the top 100 markets deployed with UMTS/HSDPA by year-end. However, the choice of handsets is still missing and as such adoption for Cingular is behind schedule.
4G. While, we are just starting with 3G (except Japan and Korea), seven of the wireless industry’s leading carriers have joined forces to “develop a common vision” for the future of mobile networks technology. Members of the Next Generation Mobile Networks initiative include China Mobile, KPN, NTT DoCoMo Inc., Orange, Sprint Nextel Corp., T-Mobile and Vodafone. The group said it has created a set of requirements “for a future wide area mobile broadband network designed to offer enhanced customer benefits by delivering competitive broadband performance alongside high levels of interoperability.” In plainer terms, the NGMN appears to be devising a roadmap for interoperable 4G networks. You can sense the arm-wrestling to come. 4G could end up having some serious IPR issues if all major patent-holders don’t participate. The 3GPP licensing regime has been a failure, industry needs to be proactive, dedicate resources to the problem and get is solved to the extent it can.
Telematics. The number of firms talking about telematics or navigation on the phone or devices for your car increased quite a bit. Navteq, TeleAtlas, TeleNav, Inrix, Pharos, Kore, Teydo, and many others displayed their wares. On the consumer side, navigation is getting embedded into Local search apps which are enhancing the user experience quite a bit. FindIt and Google Maps are two examples. There were enterprise focused solutions from Tierravision, LiveCargo and @Road.
WiMax. Spent sometime with Lars Johnsson, VP at Beceem Communications talking about the prospect of WiMax worldwide. Clearly, Intel and Clearwire’s announcement has reenergized the industry and taken some uncertainty out. Lars is extremely knowledgeable person on everything WiMax. He co-founded Flarion which got sold to Qualcomm last year. It looks like the benefits of 802.16e will render 802.16d useless in short order. “e” provides better link capacity, Forward Error Correction, power efficiencies, and optimization. The cost of building a WiMax modem is lower than the WCDMA counterpart. A number of cable and wireline players are looking for triple-play offerings. Beceem has strong partnerships with OEMs worldwide and is actively involved in several trials in Korea, Taiwan, Japan, India, and US. The biggest challenges are around interoperability (as always) and quick resolution of IPR issues. From an application perspectives, gaming companies are the ones watching it closely. Also, automobile media player vendors are interested in using WiMax for Broadcast video. Tropos believes that Mesh technology will continue to have relevance in a WiMax-enabled world as the practical ranges of base stations won’t exceed 5-10miles.
M&A. Some major M&A news at the show– Real acquiring WiderThan for $365M, Lucent acquiring Mobilitec for undisclosed amount, and FOX acquiring 51% stake in Jamba for $188M. This follows Sybase’s acquisition of Mobile365 last week for $400M. There are several factors at play. Clearly, some segments of the industry that have matured are facing price pressure and hence consolidation. Media companies are also realizing the potential and don’t want to miss out or get behind the curve so acquiring companies that have traction, not necessarily the best technology. Some of the valuations just don’t make sense but I guess some over-exuberance is to be expected at this time.
Handset launches. You might have missed the announcement; there was no Steve Jobs, no iPhone release. Pearl was probably the highlight of the show though plans had been leaked in the media sometime back. RIM has Razresque aspirations from the device. The big three didn’t have anything interesting. Nokia launched E62 (thankfully, taking a cue from Motorola, they are getting rid of their number scheme), however it is missing 3G and WiFi support of its European cousin E61. Kyocera had some interesting devices as discussed above. Sprint launched two EV-DO Rev A data cards from Pantech and Sierra Wireless. Cingular announced a $150 HTC Smartphone. Linux handsets are also on the rise. Obigo/Teleca had some nice tools/products for mobile Linux – Browser, IM, Media and Email client. The user experience was quite nice.
Mobile TV/video. At the last two shows, Mobile video and Mobile TV were all the rage. The solutions seem to have matured though uncertainty of its success remains (primarily around time-horizon to success). There are too many providers in the space offering solutions from individual codecs to end-to-end solutions, do-it-yourself toolkits (Nexage) to user-generated video solutions (ComVu, Juicecaster – ComVu’s one click mobile broadcast capability was pretty good) to niche demographics (Viva Vision is getting good traction in the Latino market). Various pieces of the mobile video puzzle have been commoditized, now, it is all about packaging. There were a number of Mediaflo handsets on display as well. The quality of Broadcast is really good. I saw some Broadcast TV services in Seoul earlier this year and the user experience is pretty good. My partner watched the entire South Korea soccer world cup game on his mobile device as he wasn’t near a TV. Once the market gets seeded with enough phones and service pricing settles to mass-market scale, we can expect good adoption rate for such services. Imagination Technologies out of UK showed some innovative SoC (System on Chip) solutions targeting Mobile Broadcast video. Some new names in the space are QuickPlay, Picsel (nice user experience), and Convisual. Expect some consolidation in this space over the next 12 months.
The ecosystem friction. The mobile data ecosystem tension is bubbling up. Carriers want control (some more than others) so that they can manage user experience and minimize customer support calls. Content companies want to bypass the carrier and go direct to the consumer. This was also evident in the Walt Mossberg’s grilling of the carriers as well as other conversations with participants in the value chain. Things are improving but not at the pace everyone would like it to be. Clearly, ecosystem only proliferates if it is allowed to make money. If certain sections of the chain get strangled, holes start to develop which pollutes the system.
User experience. Didn’t see much progress on the UX front. Saw a cool implementation from FAST for Optus in Australia where they used search technology to populate the Active Screen with user preferred content. Optus has been using this offering to entice users to 3G as it is not available on lower bandwidth network and is apparently having good success. Add context and some multimedia and it becomes very very compelling. It is one area that hasn’t been exploited that much yet. In the US Cingular’s MediaNet implementation uses the same concept but is more browser-based. In different sessions, carriers agonized over limited shelf space and mountain of content. That’s why man invented “mobile search”. The concept of “deck” is very limiting. Content needs to get exposed via search whether it is post-query or pre-populated dashboard based on context and preference.
Test equipment – Whether it is entertainment or enterprise, very little attention is given to testing and monitoring data applications and services. Keynote launched a really useful product offering (Mobile Device Perspective) that enables developers to test their app from distance on a live network and live devices and control it through manual steps or automation. Currently, such testing is done by flying a team of testers, test, and optimize. This offering can reduce the cost of such operations. I took a look at their R&D and test setup and found it quite compelling. TestQuest also showed a product along the same lines though it is more of a platform play than a service offering.
MVNOs. There is a realization that MVNO business is hard. The unrealistic expectations for customer growth are being recalibrated. It is still a viable business model but one has to give time and execute like a carrier. Virgin Mobile noted that it requires at least 2M subs before a nationwide MVNO (in the US) will cross the line from red to black.
IMS. Talked to Lucent and NMS about their pre-IMS solutions. NMS was displaying a technology around P2P mobile video sharing while talking (though the tasks happened in time-slice mode). Lucent had a solution “extensions” which converged PBX and Mobility. An example would be you dial a 4 digit extension on your mobile phone that connects you to the other party as if you dialed it from your desktop phone. BUT, networks aren’t there yet and devices will arrive a bit later. In the interim, companies are looking to stimulate the simulated IMS experience.
Funding news. Several funding news from the show, the one that caught my eye was $10m for Bubble Motion in VoiceSMS (funded by Sequoia Capital). It should be noted that there is prior art in this space and the likelihood that the company is infringing on somebody’s patents are high.
Coolest gadget. MyVu’s media viewer
Coolest booth. Infospace’s Tony Hawk show was probably the most exciting thing happening on the show floor. Watching the masters go swing-swong had the crowd go wild with ooohs and aaahs.
Misc. News.
- Melodeo won a major podcasting deal with Cingular.
- Medio Systems announced the big Verizon deal (mobile search including use of voice as input).
- Hookmobile – Got a preview of the services coming out next week on all four operators. It is around Mobile Trading Community and using content to digitize trading cards, create some exclusivity and hence some viral effect. In future users can create their own trading cards for their social network. Carrier keeps 35% of the subscription fee. Hookmobile gets 27% and rest goes to the content guys. This could be good for the MMS infrastructure that is collecting dust right now. And yes, you guessed it right; there is an Ad model as well.
- New York City is going to use IPWireless technology to build a $500 million network for police, firefighters and other public-safety agencies
- Users of EV-DO data cards were much happy customers than free Wi-Fi users. Though things were better, under load, the free network comes to its knees fairly quickly.
- SpinVox had a simple but useful offering – converting voicemails to text messages. Use case – you are in a meeting, somebody leaves a voice message, can’t go out to listen, peek under the desk to see (the SMS) if it is important.
- SNAPin’s solution is designed to address Carrier’s customer calls. It wouldn’t be a stretch if carrier starts selling “the deck” to other companies especially in the airlines, insurance, and credit-card industry. You dial the number; phone captures it, goes into the system and brings you the answers to the questions you might be most interested in (in a data format).
Your comments are always welcome.
July Systems Patents September 6, 2006
Posted by chetan in : Strategy, US Wireless Market, Patents , add a commentOver the last 2 months or so, July Systems got awarded 3 patents, 2 in DRM arena
7,103,351 Policy service system and methodology
7,089,594 Application rights management in a mobile environment
7,076,562 Application intermediation gateway
I will be looking at the claims to determine if they have any broader implications. There are a number of other players who own DRM patents that get licensed, so it will be interesting to see what’s unique about these. DRM is a critical piece of the puzzle and if they are strong patents, company’s valuation would go up.
