Video Transcript
Auto-generated transcript. Timestamps are approximate.
[0:01]
Welcome to The Innovation Cafe I’m Gary your friendly neighborhood inv venor and today I want to talk with you about a really hard lesson I learned and it it’s a really brief one but when your patent lawyer says you have to enable things in your specification pay attention to them so little background here’s what a specification is when you apply for a patent it’s really a document to teach people right so it’s intended as a teaching document and it’s really weird actually when you see someone else’s patent application get rejected over yours I’ll read something like well uh you know looking at claim for Schuster teaches this and therefore it renders your claim obvious and it always is very weird to me but that’s because they really are teaching documents and you’re supposed to teach the world how to do the invention and in order to you know be able to claim the invention you have have to fully enable it and I what I learned is it’s more than just a
paragraph So this was back in 1999 or 2000 and I was you know being a lawyer on the one hand and managing a server Farm on the other hand simultaneously and I just decided to do a thought experiment I took my Palm Pilot because that’s what we had before smartphones and I thought what if this Palm Pilot had the power of that server farm and this this is a amazing kind of thing that inventors do which is you ask these what if questions because you can kind of see the future coming so I saw the future coming it was going to be you we had Mor’s law you doubling of computing power having of prices of processors I was seeing you battery energy density going up storage going up and you know we had it was becoming clear that we were going to have pretty fast wireless internet so I I’m playing this game really if those things are all here what cool stuff could I invent and so I invent a what I called a listening PDA which for everyone younger than me
PDA is personal digital assistant not a public display of affection um although a listening public display of affection is itself something interesting that I can’t figure out but um this is a a personal digital assistant and you know imagine I jammed a whole server Farm worth of power in there imagine unlimited uh uh bandwidth unlimited battery life you know just what could you do with a crazy device that could do all kinds of stuff well I mean I’m currently have one I have one this has probably about as much powers that entire server Farm had uh in the um you know in the year 2000 so the you know I guess the future right that that’s where the future was going so I do all these disclosures where it’s it’s listening to the conversations you have and you know in the background it’s you know looking up data that way when you’ve picked up the phone or the Palm Pilot back in the day you it would already have and the
example I used was you go to Circuit City now bankrupt to buy a DVD player which no one buys anymore so this is an old invention right and um it’s listening to you have this conversation with the salesperson and when you pull the PDA out of your pocket you can see there are reviews for the play you were talking with the salesperson about and you know they had all kinds of other features but I thought you know it was getting late I’d been drafting this the you know patent disclosure for the patent lawyers for days and days and I had this idea I thought wow how cool would it be if while this thing’s listening if it hears music it will fingerprint the music and send the fingerprint off to a server where there’s matching Fingerprints of those songs and identify the song for you that would be really cool and so now I was capable of enabling it right then at that moment I had the entire invention in my head it was easy I could have done something called constructive reduction to practice which is you don’t need to
build the thing if you provide the blueprints basically in your patent specification for how someone else could build it so I’m like okay I’m I’m in business but I was exhausted so I just wrote it up in a paragraph because I figured you know so much of this stuff it’s just putting together some pieces and the pieces are complicated but it’s knowing how to put them together and you know I I bet you that’s enabled enough well it wasn’t and that is frustrating because you decade later around comes Shazam and everyone’s doing music fingerprinting and you know now if I’m listening to music and I pull my phone out of my pocket I’ll be damned if you don’t see the name of the song and the artist on the front of my phone it’s a pixel it’s a Google pixel um not a sponsored ad but you know hey if you want to throw some pixels my way go for it uh Google but um this technology is now everywhere and so had I written more than a paragraph you know basically what the paragraph said was
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it’s always listening it fingerprints the music using well-known fingerprinting techniques uh for music it sends the fingerprint to a server the server responds back and you know you have you have your music identified it wasn’t enough I needed to talk about you know here’s how you actually do the fingerprinting here’s how you’re going to communicate to the server here’s how you filter out the noise that’s happening in the background I mean there were a lot of things that I I should have enabled so the trick here is dimensionalization of patents when I write a patent applic application now and I that is that is a costly lesson for me so when I now write a patent specification and a patent disclosure I include details here’s exactly how you do it and you might want to do it this different way so I’m dimensionalizing it and here’s how you do it the different way as much detail as possible and um it turns out that I’ll talk about it in
another presentation but there is this case called Alice and and a bunch of other cases that happened after that that really narrowed patentable subject matter and it made it much harder to get a patent on something that doesn’t get really into the weeds with how you build it so um it turns out that Not only was my patent lawyer right to say you got to have you know you got to fully disclose it in the specification and fully enable it but um he actually had to do even more than he was advising me to do at the time so that’s my big lesson it’s my it’s the reason I don’t have a yacht right now it’s I have a feeling that patent would have been quite valuable but you know lesson learned I mean lessons aren’t free and there’s one so this is innovation Cafe I’d love for you to hit the like button I’d love for you to hit the Subscribe button um send it to your friends uh we are going to be really enabling a generation of people to be their true inner creative selves so from The Innovation Cafe in my living
room uh signing off Gary your neighborhood inventor thank you so much for listening and um we’ll see you at the next video