How to Invent and Protect Your Invention
A Guide to Patents for Scientists and Engineers
1. Edition October 2012
256 Pages, Softcover
Wiley & Sons Ltd
Short Description
A straightforward guide to inventing, patenting, and technology commercialization for scientists and engineers, this book provides a clear, jargon-free, and comprehensive overview of the patenting process tailored specifically to the needs of scientists and engineers. It explores the requirements for a patentable invention; the process of applying for and obtaining a patent in the U.S. and in foreign countries; and more. Based on lecture notes refined over twenty-five years at The University of Akron, this book contains practical advice, colorful examples, and a wealth of personal experience from the authors.
A straightforward guide to inventing, patenting, and technology commercialization for scientists and engineers
Although chemists, physicists, biologists, polymer scientists, and engineers in industry are involved in potentially patentable work, they are often under-prepared for this all-important field. This book provides a clear, jargon-free, and comprehensive overview of the patenting process tailored specifically to the needs of scientists and engineers, including:
* Requirements for a patentable invention
* How to invent
* New laws created by President Obama's 2011 America Invents Act
* The process of applying for and obtaining a patent in the U.S. and in foreign countries
* Commercializing inventions and the importance of innovation
Based on lecture notes refined over twenty-five years at The University of Akron, How to Invent and Protect Your Invention contains practical advice, colorful examples, and a wealth of personal experience from the authors.
ACKNOWLEDGMENTS xix
ABBREVIATIONS xxi
1. THE U.S. PATENT SYSTEM 1
1.1. What is a Patent? 1
1.2. Why Should You File A Patent? 5
2. ORIGINS OF U.S. PATENT LAW 7
2.1. A Brief History of Patent Law 8
2.2. The Fountainhead: The Constitution and the U.S. Patent System 9
2.3. Are Patents a Monopoly? 11
3. HOW TO INVENT: INTELLECTUAL ASPECTS OF INVENTING 12
3.1. On the Definition of Creativity 12
3.2. A Flaw in Patent Law 13
3.3. Patentable Creativity 14
3.4. Intellectual Requirements of Inventing 15
3.5. The Process and Product of Inventing 16
3.6. Pioneering versus Mediocre Inventions: The Touch of the Expert 17
3.7. The Importance of Industrial Experience 17
3.8. The Ultimate Goal: Innovation 18
4. A SHORT SUMMARY OF INTELLECTUAL PROPERTY 20
4.1. Patents 21
4.2. Trade Secrets 21
4.3. Copyrights 22
4.4. Trademarks and Servicemarks 23
4.5. Other Types of Intellectual Property 24
5. REQUIREMENTS OF PATENTABILITY 26
5.1. What is Patentable? 26
5.2. Patentable and NonPatentable Subject Matter 27
5.3. The Three Classes of Patents 28
5.4. The First Law of Inventing 28
5.5. The Second Law of Inventing 44
5.6. The Structure of the Patent Document 48
6. HOW DOES THE PATENT PROCESS WORK? 55
6.1. The Notebook 56
6.2. The Provisional Patent Application 56
6.3. The (Regular or Nonprovisional) Patent Application 58
6.4. Prosecution: Convincing the Patent Examiner 60
6.5. Continuation, Continuation-in-Part, and Divisional Applications 64
6.6. Allowance and Issuance 68
6.7. Loss of Patent Rights 68
6.8. Challenges and Changes to Issued Patents 69
6.9. Summary of Chapters 5 and 6 73
7. INFRINGEMENT AND FREEDOM TO OPERATE 74
7.1. The Parable of the Knife 75
7.2. Types of Infringement 77
7.3. Infringement Suits 79
7.4. When to Sue an Infringer 80
7.5. Freedom to Operate 80
7.6. Prior Commercial Use Rights 82
8. BIOTECHNOLOGY, COMPUTER SOFTWARE, AND BUSINESS METHOD PATENTS 84
8.1. Biology Meets Patents 85
8.2. Computer Software Patents 89
8.3. Business Method Patents 90
9. WHO IS THE INVENTOR? 91
9.1. Conceiving an Inventive Idea 92
9.2. Joint Inventors 93
9.3. Naming Inventors on Patent Applications 95
9.4. Qualifications to Be an Inventor 95
10. OWNERSHIP 96
10.1. Selling, Licensing and Assigning Patents 97
10.2. Hired-to-Invent and Shop Rights 97
10.3. Inventing on Your Own Time 98
10.4. Non-Compete Agreements 98
10.5. The Bayh-Dole Act 99
11. TRANSLATING IDEAS INTO ECONOMIC REWARD 102
11.1. The Costs of Patenting 102
11.2. Assessment 104
11.3. Selling and Licensing a Patent 110
11.4. Start-Ups, Spin-Outs, and Joint Ventures 112
11.5. Patenting and Marketing Departments; Technology Transfer Offices 113
11.6. Patent Valuation 114
12. FOREIGN PATENTS 116
12.1. Distinctive Features of U.S. Patent Law 117
12.2. The International Patent Cooperation Treaty 118
12.3. The European Patent Union 120
12.4. Other Foreign Patent Practices 121
12.5. Enforcing Patents Abroad 123
12.6. Choosing Whether to File a Foreign Patent Application 124
13. INNOVATION 125
13.1. Innovation Is More Than Invention 125
13.2. What Drives Innovation 126
13.3. The Law of Innovation 126
13.4. Companies and Innovation 127
13.5. The Innovation and Job Creation Relationship 127
13.6. Discovery Push versus Market Pull Innovation 128
13.7. Incremental versus Disruptive Innovation 128
13.8. Sources of Innovation 129
13.9. Innovation and Public Policy 129
14. CONCLUDING THOUGHTS 131
14.1. Is the Patent System Worth the Costs? 131
14.2. The Patent System Leads to Additional Research and Knowledge Creation 133
14.3. Fostering Competition 134
14.4. Results of Ignorance of the Patent System 135
14.5. How Law and Technology Yield Patents 136
APPENDIX 1: IMPORTANT FORMS 139
APPENDIX 2: SELF-ASSESSMENT QUESTIONS 177
GLOSSARY 196
INDEX 209
"Introducing an easy-to-read, jargon-free overview of the patent application process for scientists and engineers: How to Invent and Protect Your Invention: A Guide to Patents for Scientists and Engineers published by Wiley, is updated with the most recent changes to U.S. patent law that were made in Fall 2011." (Physorg, 27 November 2012)
WAYNE H. WATKINS, BS (engineering), MBA, JD, is Associate Vice President for Research at The University of Akron, adjunct professor of law, and Vice President of the University of Akron Research Foundation where he leads technology commercialization initiatives. He has particular expertise in intellectual property management and new enterprise creation and growth. He is a principal in three companies in chemistry and biotechnology.
ELYSE N. BALL, BS (journalism), JD, is a Project Manager for the University of Akron Research Foundation where she regularly works on technology licensing projects and supporting university startup companies. She is involved in technology development in the polymer science, advanced energy, and biomedical fields.
