Interview with Viswanath Annampedu - A Prolific Inventor with 50 Patents

 Viswanath (Vish) Annampedu holds a Ph.D. in Electrical Engineering and has over 25 years of experience working in the USA as a Principal Engineer and Principal Systems Architect. Vish has a remarkable track record of obtaining patents, with 50 patents to his credit in the fields of magnetic hard disk drives and high-speed communication links. In this opportunity, let's hear from Vish about how he developed an interest in patents and gain insight into his extensive knowledge on the topic.

Inventor Vish Annampedu

When did you first get an idea to file patents? What was your motivation or inspiration?

          I got my first patent idea in 2000, a couple of years after I started working at Lucent Bell Labs on signal processing architecture of a crucial and complex chip called Read channel used inside every hard disk drive today.  This chip is responsible for positioning a magnetic head over the data tracks in a magnetic disk, reading and converting data from magnetic signals into electrical signals (bits 1’s and 0’s), and for writing data to the magnetic disk for storage.  

I was fortunate to be mentored by many talented people at Bell Labs who held numerous patents and prestigious publications at that time.  Their success inspired and motivated me.  They encouraged me to write patents based on our novel solutions for solving complex signal processing problems in the Read channel chip.  I was also challenged and motivated to solve the real-world technical problems faced by our customers.  

I learned that any novel solution to a real-world problem could potentially be a patent idea. The more problems we solved, the more patent applications we filed, and the more motivated we became to do even more! It is also fulfilling to see your inventions become a part of real-world products. Additionally, patents and publications are beneficial not only to the company and its products, but also serve as a means to showcase your talents and expertise to the entire industry outside of your company.

Vish with his Patents

How many patents have you filed so far? Which was your first patent?

          I have about 50 U.S. patents that have been granted and a couple more that are in patent pending status.   My first patent is “Scheme To Improve Performance Of Timing Recovery Systems For Read Channels In A Disk Drive”, U.S. Patent No. 6,856,183 granted on February 15, 2005.  This patent took about 4 years from conception of the idea into a granted patent.

          Another notable patent that I am proud of is “Servo Data Detection in the Presence or Absence of Radial Incoherence Using Digital Interpolators”, U.S. Patent No. 7,082,005 granted on July 25, 2006.  This idea, which is still in use in current hard disk drives, relates to high-speed seek -- that is, how to accurately place a rapidly moving magnetic head on a specific user data track on the magnetic disk surface.

          Although I am a named inventor in the patents, the intellectual property rights have been assigned to the companies I worked for.  I have more than 35 patents in the area of magnetic hard disk drives and the rest in the area of low power ultra-high speed SERDES (SERializer-DESerializer) communication links, such as NVIDIA’s NVLINK.

Vish with a Patent 

What is a patent?

Patent is simply a legal document from the government that describes an invention. It gives exclusive intellectual property (IP) rights to the owner of the patent so that others cannot use, make or sell the ideas claimed in the invention.  The details of the inventions are made publicly available through publication.  

Who is the owner of the patent?

The inventor is typically considered the owner of the patent, unless the inventor assigns the patent rights to another individual or entity.  

In the United States, for example, many companies require that the patent rights be assigned to the company.  This is required even if an employee comes up with an idea which is completely outside the scope of the company and not associated with the company in any way.  

What are the different types of patents?

There are three types of patents: Utility patents, Design patents, and Plant patents.  

Utility patents are granted for new systems, algorithms, processes, methods and machines. For example, ideas for improving the accuracy of a self-driving car can be applied for a Utility patent.  

Design patents are for protecting a new and specific design of a useful item, such as a specific design of a shoe, or a design of a baking tray, for example.

Plant patents are granted for plants that can be reproduced by grafting or cutting the plant, such as a new variety of rose flowering plants.

Who can patent?

Age doesn’t matter. True inventors of any age can patent.  

What can be patented (Patent Criteria)?

          Any invention, discovery or improvement of machines (systems, methods, algorithms, etc), articles made by machines, manufacturing processes, medicines, certain categories of computer programs (stand-alone computer software program, a mobile device app, or software that is integrated into a mechanical device), chemicals, biogenetic materials, or composition of matter that is 

1.      Statutory: meaning, if the invention belongs to a patentable subject matter as discussed above.

2.      Novel: meaning, if the invention is new and not known to the public through published articles or available products.

3.      Useful: meaning, the proposed invention should be immediately useful.  We cannot say that the invention will be useful after some more research or development.  The patent idea need NOT be in the most efficient, effective, or perfected form of a particular use . It just merely needs to work as described in your patent application.

4.     Nonobvious: meaning, the invention must not be something that a skilled person in the field could have easily come up with based on the prior art that is already publicly available, such as existing patents, publications, and available products, and  

5.     that can be Enabled:  (Enablement) meaning, if one reasonably skilled in the field could make and use the invention based on the teachings of the patent without undue experimentation.  

How to get ideas for a patent?

          For personal patent ideas, just look around you and think about what problems you and your society face on a day-to-day basis that you wish there was a solution to. There could be very many things that we wish were there or wish something was better.  For example, it could be as simple as a special comb for a person that you know who cannot lift a hand and comb their hair.  If you can come up with a new design for a comb that nobody has ever done before, you could apply for a design patent.

For patent ideas in the workplace, look for unsolved problems, or problems that have multiple solutions, or problems that have complex or costly solutions, or problems that are not fully understood.  Consider the needs of customers and understand the challenges they face.  If you can come up with a novel solution to a problem, you can apply for a patent.

          Simply put, every problem one faces personally or professionally could be a patent opportunity, if you really think creatively about it.

Inventor Award from NVIDIA

Do you need a prototype to apply for a patent?

It is not necessary to have a physical prototype of your product before filing a patent application. As long as the invention meets the statutory, novel, useful, nonobvious, and enabled criteria discussed previously, a patent application can be filed.

How to apply for a patent?

          There is ample information available on the process for filing a U.S. patent at www.uspto.gov. Additionally, there is a dedicated customer support line to assist with any questions on the patent filing process and provide guidance. Other countries likely have similar resources available. For example, the website https://ipindia.gov.in/ offers information on filing patents in India.  

What is first-to-file rule?

          Once you have determined that your patent idea is viable and meets the necessary criteria, it is advisable to promptly file a patent application. In the United States, the patent law awards the patent rights to the first individual who files for the patent. In the event that two individuals have the same idea, the person who files first will receive the rights to claim the intellectual property in the patent application, regardless of who thought of or invented the idea first. The importance lies in the filing of the patent application for the invention. The United States switched from a first-to-invent system to a first-to-file system on March 16, 2013.  

What is prior art?

Prior art is a crucial concept in patent law that is used to evaluate the Novelty and Non-obviousness of your patent idea. Prior art refers to any information that has been made public, such as through publications or commercially available products, that may be relevant to your patent idea. You must demonstrate that the idea you (or someone with ordinary skill in the field) have cannot be easily derived from the prior art.

Obviousness and lack of novelty are common reasons for a patent examiner to reject a patent application. The examiner may argue that your idea was derived from prior art and provide references to support their claim. In such a scenario, you may need to prove that your idea is novel and cannot be deduced from the cited prior art references.

What is the difference between a provisional and a non-provisional patent?

There are two primary methods for filing a patent application. The first is a Non-Provisional Patent Application, which undergoes a comprehensive review process by a patent examiner and, if approved, may ultimately be granted to the inventor. The second is a Provisional Patent Application, which is not reviewed by a patent examiner. This option is more cost-effective and provides a quicker way to secure a priority date, which is the date on which the application was first filed and protects the inventor's idea from that point forward. The requirements for a Provisional Patent Application are less stringent and may even be submitted without claims. This option is ideal for inventors who need to secure their idea quickly or have not fully developed their invention. Within a one-year timeframe, the Provisional Patent Application must be converted to a Non-Provisional Patent Application to retain the original priority filing date, or it will be canceled. One added benefit of a Provisional Patent Application is that it allows the inventor to use the "Patent Pending" status on their products to indicate that the patenting process is underway.

What are Patent Claims?

          The claims section is the most important part of a patent document describing the extent of protection for your idea and specifies exactly what the patent covers and does not cover.  Strong claims, which are broader with short and crisp details, are more valuable than weaker claims, which are narrower with more elaborate details.
          For example: Suppose you invented a new chair and claim protection for “a chair design with any number of legs” in your patent application.  This is very broad in scope as it covers a broad range of open-ended designs.  If the patent gets approved, no one can then make chairs without violating your powerful patent.  But the patent examiner won’t allow your claims and will reject them based on the prior art of existing chairs with four legs and other similar patents.  As an inventor, you may wish for such a broad claim to be in your patent for monetary potential, but it is likely that you may not get the patent approved with such a broad claim.  On the other hand, an example of a weak claim for the same chair design is, “The chair design has a back section made of wood and cotton filling covered with white cotton sheet, a seat section made of steel and foam wrapped in black leather, four wooden legs of brown color that are attached to the seat using ½ inch aluminum nails”.  This is very narrow in scope with too many elaborative details and limitations.  It is very likely that you will get this weak patent claim allowed, but it will be useless, because anyone can easily change a few details of what is claimed in the patent and make a similar product without violating your patent.  As an inventor, it is important to strike a balance between the breadth and specificity of the claims to ensure that the patent provides the desired level of protection.

What are independent and dependent claims of a Patent?

          Independent claims are the core and stand-alone claims which describe the fundamental aspects of the invention with all its limitations.  Dependent claims, as the name suggests, depend on the stand-alone independent claims which further limit that independent claim.  This allows for a more detailed description of the invention and provides multiple layers of protection. The claims section should be written carefully and clearly to provide the maximum protection for the invention.  For example, Let's say the independent claim is, “Claim 1: A chair with a seating area connected to a set of four legs”.  The dependent claim example would be, “Claim 2: The chair of claim 1, wherein the four legs are made of wood”. Another example is, “Claim 3: The chair of claim 2, wherein the wood is obtained from a teak tree”.  Claim 3 in this example, depends on Claim 2 which depends on the independent Claim 1.  If the independent claim is not infringed, then the dependent claims will also not be infringed. 

Why is it very important to draft independent claims in a clever way?

          Independent claims serve as the foundation of a patent application and are crucial in determining the scope of protection for your invention. It's important to strike a balance between writing a claim that is broad enough to capture the essence of your invention, while also including enough details and limitations to make it patentable.

The patent examiner will carefully evaluate the independent claims to ensure that they meet all the requirements for a patentable invention, including novelty, non-obviousness, and enablement. As an inventor, your objective should be to write the broadest possible claim, while the patent attorney's goal is to ensure that the claim is legally sound and can withstand the scrutiny of the patent office. Keep in mind, the broader your independent claim is, the more valuable it is, however, it also becomes more challenging to get approval from the patent office. On the other hand, the more details and limitations included in the independent claim, the narrower and less valuable it becomes.

Ultimately, the independent claim should provide a clear and concise description of your invention that distinguishes it from prior art and provides adequate protection for your idea.  

What are the general guidelines for writing independent and dependent claims? 

There are tons of free resources and examples available on the internet these days on how to write patent claims. Another great place to look is to read a few sample patent documents, which are easy to follow. For U.S. Patents, you can access patent publications at www.uspto.gov. By following a similar format, language, and style used in existing patents, you can write your own patent application.

In the U.S., you can file up to three independent claims and a total of twenty claims (dependent and independent) without incurring additional patent filing fees. It is typical for a U.S. patent to have one to three independent claims and the rest as dependent claims, for a total of twenty claims.

How to get help in writing a patent?

          The most cost-effective way to obtain a patent is to write the patent application yourself. You can do so by reading books, researching online materials, watching YouTube videos, learning from prior patent applications, and following a similar style and language. You will only need to pay the government filing fees. In the U.S., you can also approach a patent attorney or a patent agent to represent you and write the application on your behalf, but this can be quite expensive. Hourly charges of $400 or more are common for a patent attorney, and the cost to obtain a patent through an attorney can be around $20,000. Patent agents, who are below the level of an attorney and cannot represent clients in patent lawsuits, may be slightly less expensive than an attorney. However, filing on your own is still the most cost-effective option. In the U.S., there is a free pro-bono program where the government pairs you with a patent attorney or agent for free legal help. However, there are restrictions, including family income level, on who qualifies for this benefit.

How to read a patent?

          If you can grasp what is claimed in the patent, you have understood the whole patent. If you read the Abstract and the Claims section, you have pretty much understood the patent. Of course, the body of the patent provides more details, but you may already be familiar with these details and might want to quickly see what is claimed in the Claims section first.

What is an office action?

          An office action is the patent examiner's response to your patent application. It is a formal document and requires a formal, written, and signed response for the patent application process to continue.

After you file your application, a patent examiner who is assigned to your case will review it and reach out to you with reasons why the claims in your invention are allowed or not allowed. Then, you must provide a written response explaining why you agree or disagree with the patent examiner's concerns to move forward with the application process. This stage can go back and forth and can cost a lot of time and money if you are being represented by a patent attorney or agent. If you filed the patent yourself, you can also write your own response to the office action and handle the process yourself. It will take some effort, but it can be done.

How to enforce if you believe that someone is infringing your Patent?

          It can be difficult, especially if you are representing yourself without the support of an attorney or a large company. Technically, one could sue the infringing party in a court of law, but as you can imagine, this could cost a lot of money and time, as you would likely have to go through an attorney. As you can imagine, if the infringing party is a large company with strong finances and legal counsel, it can be challenging to prove the violation. Large companies often have a separate legal department focused on creating their own patent portfolio and on how their competitors may be violating their intellectual property.

How do you monetize your patent?

One way to monetize your patent is to sell your patent rights to another entity for a certain amount of money, which may or may not be a good deal in the long term. Just like real estate brokers, there are companies advertising on the internet as patent brokers, offering to facilitate the sale of patents. Another way is to license your patent to others so that they can have the right to use your patent in exchange for royalty payments. If you believe that someone is infringing your patent rights, you can sue the other party to seek monetary damages. As you can understand, monetizing your patent can be a complex process.

How long do you have till you file for a patent after your idea is publicly disclosed?

          After you publicly disclose your idea in some form (such as through publication, conference presentation, public demonstration of a prototype, or filing a provisional patent), you have a period of one year to file for a patent in the United States.

What is the usual time taken from getting an idea to getting a patent?

          The process may take an average of two years. Some patents are approved after addressing minimal concerns from the patent examiner within a year or so. However, some applications may take 3 to 4 years or even more, depending on the severity of objections raised by the patent examiner in the office actions.

Some patent applications may be approved with no office actions and some may require many rounds of office actions.  Patience and perseverance are good qualities to have in the patenting process.

What is the difference between Patent, Trademark, and Copyright?

A patent protects new inventions. A copyright protects original works, such as books, songs and movies. A trademark protects names, short slogans, or logos (such as the M symbol for McDonald’s). 

Any personal challenges you faced while filing a patent?

            Some patent applications get approved in a year and some could take like 3 to 4 years. Some patent applications may be approved with no office actions and some may require many rounds of office actions.  Patience and perseverance are good qualities to have in the patenting process. 

As previously mentioned, it is likely that the patent examiner will come up with some form of concern around novelty, obviousness or usefulness to reject your claims.  Let’s take a simple hypothetical claim example. Let’s say you have come up with a novel burglar alarm system and recite the following claim,

“ A burglar alarm system comprising:
            a light, a sensor, a processor and an alarm;
            the sensor capable of detecting a presence or an absence of a burglar; and
            the processor capable of receiving the sensor decision and operate the light and the alarm”

The claim may look broad and nice.  But it is likely that the patent examiner will raise some concern and not allow it.  In patent law, laws of nature, natural phenomena or abstract ideas cannot be patented. For example, the patent examiner may say that the above claim fails to integrate abstract ideas into a practical application and create an office action to reject it. You may accept and abandon the application or respond back. For example, because the wording “operate the light and the alarm” is too abstract, you may narrow down the scope of your claim (making it less powerful) to the following and try again.

“ A burglar alarm system comprising:
            a red light, an ultrasonic sensor, a processor and an audio alarm;
            the ultrasonic sensor capable of detecting a presence or an absence of a burglar; and
            the processor capable of receiving the ultrasensor sensor decision and if the presence of a burglar is detected, the processor  turns on the red  light and also turns on the audible alarm”.

The more detailed the claim is, the less valuable or weak it becomes.  The patent examiner reviews again and may find new concerns and say that it is now obvious from a previous similar patent and cite a prior art. This process could go on back and forth.  In the end you and the patent examiner may come to a compromising claim wording that is acceptable to both - but may or may not be as powerful or valuable as before.  An experienced patent attorney may argue or negotiate more effectively with the patent examiner to get the claim allowed through the use of carefully chosen words.  

You may get a patent in the end, but the challenge is whether you received a good patent with powerful and strong claims or not.  

How do you find out if someone has worked on your patent idea before?

            You don't need to know if someone else has had a similar idea unless it has been publicly disclosed.  Once it is publicly disclosed it becomes prior art to your patent application.  Once the other idea has become known publicly, you can determine whether your idea is still novel and non-obvious in comparison to the other idea.  If you believe so, you can still apply for a patent for your idea. Along with your patent application, you are legally required to disclose all prior art of which you are aware, including references such as publications, earlier patents, and related products.  But you may not have access to all of the information and search tools that a professional patent attorney or an examiner may use in finding out ideas related to yours.  Therefore, conduct a reasonable search for prior art related to your idea and disclose it along with your patent application.  
            Also, keep in mind the first-to-file rule in the U.S.  Even if someone else worked on your idea before but failed to file a patent for it, you may still have an advantage if you file first under the first-to-file rule. 

View Vish’s LinkedIn profile here:

https://www.linkedin.com/in/vish-annampedu-a9a2684

You can reach Vish at:  annampedu@gmail.com