Video Transcript
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Welcome to The Innovation Cafe. I’m Gary, your friendly neighborhood inventor, and today I want to talk with you about a really hard lesson I learned. 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. 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, looking at claim four, 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. You’re supposed to teach the world how to do the invention, and in order to be able to claim the invention, you have to fully enable it.
What I learned is it’s more than just a paragraph. You literally need to go into detail as to how a person having ordinary skill in whatever art you’re talking about could take what you’ve given them and go build your invention. If you don’t give them enough, the patent examiner is going to reject your application. And even if they don’t catch it, someone later on can come back and challenge your patent for lack of enablement.
So here’s my story. I was working at a company, and I was an inventor on a number of patents. One of them in particular was really cool. It was for a personal digital assistant — and imagine I jammed a whole server farm’s worth of power in there. Imagine unlimited 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 currently have one. This has probably about as much power as that entire server farm had in the year 2000. So I guess the future is where the future was going.
So I do all these disclosures where it’s listening to the conversations you have, and in the background it’s looking up data. That way, when you’ve picked up the phone — or the Palm Pilot, back in the day — it would already have the information. 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. And it’s listening to you have this conversation with the salesperson, and when you pull the PDA out of your pocket, you would already have a price comparison of the DVD player you’re looking at, the reviews, and all the information you’d want.
We got several patents on the PDA itself. Now, there were aspects of it that we should have dug deeper into. What we did was, in the specification, I wrote something like, “Using well-known music fingerprinting techniques, the device identifies the audio.” And the patent lawyer said, “You’ve got to tell them more about the fingerprinting.” And I said, “It’s well known. They’ll know what to do.” And he said, “No, you need to enable it. You need to describe how the fingerprinting works.”
And I pushed back and I said, “Look, the fingerprinting isn’t the invention. The invention is the whole system — it’s the listening, the processing, the real-time lookup.” And he kind of let it go because, you know, I was pretty insistent. And we filed it the way it was.
Well, fast forward about a decade, and here comes Shazam. And everyone’s doing music fingerprinting. And now, if I’m listening to music and I pull my phone out of my pocket, I’ll be darned 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. Not a sponsored ad, but hey, if you want to throw some Pixels my way, go for it, Google. But this technology is now everywhere.
And so, had I written more than a paragraph — you know, basically what the paragraph said was: it’s always listening, it fingerprints the music using well-known fingerprinting techniques for music, it sends the fingerprint to a server, the server responds back, and you have your music identified. It wasn’t enough. I needed to talk about how you actually do the fingerprinting, how you’re going to communicate with the server, what protocols you’d use, what the server-side architecture looks like.
Had I enabled that properly, I’d probably be on a yacht right now telling you this story. Because that patent would have been incredibly valuable when Shazam and all these other music identification services came along. Instead, it’s a cautionary tale. When your patent lawyer tells you to enable your specification, listen to them. Don’t cut corners. Don’t assume that “well-known techniques” is good enough. Spell it out. The more detail you put in, the stronger your patent is going to be.
So that’s the mistake that cost me a yacht. Learn from it. Thanks for watching!