Patent Engineering E-Book

Donald S. Rimai

• Herausgeber: John Wiley & Sons
• Kategorie: Fachliteratur
• Sprache: Englisch

Seitenzahl: 447

Veröffentlichungsjahr: 2016

Beschreibung

Patents are a vital asset in the modern business world. They allow patent holders to introduce new products in to a market while deterring other market players from simply copying innovative features without making comparable investments in research and development. In years past, a few patents may have provided adequate protection. That is no longer the case. In today's world, it is critical that innovative companies protect the features of their products that give them a competitive advantage with a family or portfolio of patents that are strategically generated to protect the market position of the patent holder. A patent portfolio that deters competitors from introducing competitive products in a timely manner can be worth billions of dollars. Anything less than this is an expensive and possibly fatal distraction. This book provides a strategic framework for cost efficient engineering of patent portfolios that protect your investments in research and development and that extend the market advantages that these investments provide.

Leseprobe

Contents

Cover

Half Title page

Title page

Copyright page

Dedication

Preface

Acknowledgements

About the Author

Chapter 1: An Introduction to Patent Engineering

The Night before Product Launch

The Value of Patents

Implementing a Patent Strategy

Goals of a Patent Strategy

Examples and Consequences of Two Patent Strategies

Goal of This Book

Chapter 2: Patents and Patent Strategies—What They Are and Why You Need Them

The World Changed

40 Years Ago

The World Today

The Role of Patents

Inventors

Inventions

Preparing to File

The Five Patent Commandments

References

Chapter 3: Developing a Patent Strategy and Patent Engineering

Five Patent Strategies

A New Strategy: Problem-Specific Filing or “Owning the Problem”

Guiding Your Technical Team: The Patent Engineer

A Brief Look at Applications, Prosecution, and Claims

Additional Goals of a Patent Strategy

A Brief Look at Claims, Infringement, and Assertion

References

Chapter 4: Implementing Patent Strategies and the Application Process through Patent Engineering

Patent Application Process

Claims

Prior Art and Novelty

Obviousness

Patent Practitioner

Patent Application Prosecution

Value of a Sound Patent Strategy

Goals and Uses of Patents

Patent Engineering and Owning the Problem During the Application Process

Critical Challenge

Timing

Post-Filing Considerations

References

Chapter 5: The Structure of a Patent

Patent Practitioners

Patent Engineering

Patent Structure

What a Claim Entails

Opportunities to Enhance Your Portfolio

Prior Art Searches

Background Section of a Patent

Detailed Description of the Invention Including the Figures

Benefits of Common Disclosures

A Closer Look at Prior Art Searching

Chapter 6: Inventions and Inventorship: Challenges and Complications

What is a Patent?

What is an Invention?

Claims and Novelty

Protecting Your Intellectual Property When Dealing with Contractual Companies

Utility

Obviousness and Ordinary Skill in the Art

Ordinary Skill in the Art: An Actual Example

Obviousness: An Actual Example

Only One Invention per Patent

Asserting Your Patent

Inventors and Inventorship

Addressing Inventorship Issues

References

Chapter 7: Patent Engineering and Patent Prosecution

Types of Patents in the United States

Patentability

Reviewing the Prior Art Search Results

Addressing Prior Art in Your Applications

Should You File Internationally?

Hiring a Patent Practitioner and Reviewing Your Patent Strategy

Provisional Applications

Office Actions

Abandoning an Application

References

Chapter 8: Controlling the Costs of Generating and Maintaining a Patent Portfolio through Patent Engineering

Legal Costs

Indirect Costs

Fees Charged by the Patent Office

Avoidable Costs

Chapter 9: Patent Engineering in a Global Economy

The Case for Building an International Portfolio

Additional Factors Driving International Patent Filings

Building an International Portfolio and its Risks

Costs of Building an International Portfolio

Building an International Portfolio: Making Choices

Manufacturing and Marketing Considerations

Containing Costs and Adjusting Disclosures

Patent Cooperation Treaty (PCT) and International Searching Authority (ISA)

The Role of International Patents in Owning the Problem

Designating Focus and Satellite Countries

References

Chapter 10: Avoiding an Infringement Lawsuit through Patent Clearances

Difference between Patentability and Clearance Searches

Considerations Related to Claims

Limitations on Claims: Means Plus Function

Doctrine of Equivalents

Willful Infringement

Conducting a Clearance Search

What Should Be Cleared?

In Which Countries Should a Clearance Search Be Conducted?

When Should a Clearance Search Be Conducted?

How to Conduct a Clearance Search

Some Cautionary Notes

If Your Product Appears to Infringe

Clearance Analysis and Memoranda

References

Chapter 11: The Role of the Patent Engineer

What is a Patent Engineer?

The Patent Engineer in a Corporation

Broadening Your Patent Portfolio—An Example

How the Technical Teams Benefit by Interaction with a Patent Engineer

The Role of the Patent Engineer in Joint Product Development Projects

Nondisclosure Agreements

Patent Engineers and Patent Prosecution

Patent Engineers and Clearances

The Role of the Patent Engineer in Patent Renewals

Patent Engineers and Assertions

Patent Engineers and Universities

Implementation of a Patent Strategy at a University

The Role of a Patent Engineer in a Law Firm

The Patent Engineer and Investment Firms

Controlling the Marketplace

References

Index

Patent Engineering

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Copyright © 2016 by Scrivener Publishing LLC. All rights reserved.

Co-published by John Wiley & Sons, Inc. Hoboken, New Jersey, and Scrivener Publishing LLC, Salem, Massachusetts. Published simultaneously in Canada.

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Cover design by Donald S. Rimai and Roland Schindler. The figure is from U.S. Patent 7,823,996, issued to Benjamin Rimai et al. (2010)

Library of Congress Cataloging-in-Publication Data: Names: Rimai, Donald S., author. Title: Patent engineering : a guide to building a valuable patent portfolio and controlling the marketplace / Donald S. Rimai. Description: Hoboken, New Jersey : Wiley-Scrivener, 2016. | Includes bibliographical references and index. Identifiers: LCCN 2015048490 | ISBN 9781118946091 (hardback) Subjects: LCSH: Patent laws and legislation--United States. | Patents--Economic aspects--United States. | BISAC: LAW / Intellectual Property / General. Classification: LCC KF3116 .R56 2016 | DDC 346.7304/86--dc23 LC record available at http://lccn.loc.gov/2015048490

ISBN 978-1-118-94609-1

This book is dedicated to my son Dr. Benjamin Rimai. You inspire me to reach beyond my grasp.

Preface

For 33 years, I conducted research in digital printing at Eastman Kodak. While this field was certainly chronologically mature, having been around since Chester Carlson first invented xerography in the 1930s and having been the subject of much research and development by many companies over that period, the advent of modern digital electronics presented both novel opportunities and challenges in this technological area.

Several years before I retired from Kodak, I was asked to transition from the role of an independent researcher to that of an intellectual property manager for digital printing. In that position, I was involved with generating and maintaining patents that protected Kodak’s proprietary technology, asserting patents against allegedly infringing companies, prosecuting patent applications, implementing cross-licensing agreements, and related activities. During that period of time, I had the privilege of working with world-class engineers, scientists, and technicians, as well as an outstanding legal team comprising attorneys, patent agents, and paralegals.

The technology advanced by Kodak’s technical team members was highly innovative and allowed electrophotography to go from being limited to office copiers to its rivaling both silver halide photography and offset printing in quality, reliability, and speed, while being able to integrate the capabilities of the digital era with hard-copy printing. Invention disclosures were submitted by the members of the technical staff and patent applications were filed and prosecuted by the attorneys. Kodak was highly successful in both the quantity of applications filed each year and the number of patents received. However, despite these successes, it was apparent that there was opportunity to greatly enhance the extent and the value of the patent portfolio by broadening the intellectual property actually covered by and increasing the assertability of the patents, while making the patenting process less expensive and more efficient.

While addressing the need to significantly improve the patenting process, two outstanding individuals were assigned to work with me. One was attorney Roland Schindler and the other was engineer-turned-patent agent Chris White. Both saw the need and opportunity for improvement as I did and both were enthusiastic about trying to make the improvements wherever possible. Together, we developed a methodology that allowed us to address these needs. As a result, we were able to generate a far greater number of patent applications that were broader in coverage and more extensive and assertable than those previously filed, while enjoying a high success ratio of issued patents to applications filed. We also found that, by implementing this methodology, the technical team members, who often were reluctant to divert their attention from their assignments to pursue patent applications – a task many of them considered painful – became much more cooperative as we were able to remove the most painful aspects of filing and prosecuting applications.

This book describes the methodology designed and implemented by Roland, Chris, and me. It is intended to give the readers, in this day of global competition, the tools that will enable them to use the concepts discussed herein to give their companies a competitive advantage in the marketplace, as well as to generate a patent portfolio that can significantly enhance the revenues and value of their companies.

Don Rimai Rochester, NY November 15, 2015

Acknowledgements

When writing a book, the goal is to discuss a topic in a clear and concise manner. The author gratefully acknowledges the considerable efforts of his wife Nancy Rimai for her painstaking reading, commenting, and proposing changes that have allowed this book to achieve its goals. The author would also like to thank Chris White, Kelly White and Roland Schindler for their input into this manuscript. I would especially like to thank Roland and Chris for sharing their expertise in patent law with me. The author would also like to thank Mr. Ray Owens, Esq. for the numerous discussions that we have had over our many years together. These discussions greatly enhanced my understanding of patent law and related issues.

About the Author

Dr. Donald S. Rimai recently retired from Eastman Kodak, where he worked as a researcher and intellectual property manager in digital printing and adhesion science. He is expert at developing patent portfolios and helping inventors patent their inventions. He is an Eastman Kodak Distinguished Inventor with more than 150 U.S. patents and over 120 scientific publications. Don has published five books and edited two conference proceedings, is a Fellow of the Adhesion Society and of the American Physical Society, and has won the Charles Ives and Chester Carlson Awards. Don holds a BS from Rensselaer Polytechnic Institute and MS and Ph.D. degrees from the University of Chicago. In 2014 Dr. Rimai received the Inventor of the Year Award from the Rochester Intellectual Property Law Association.

Chapter 1

An Introduction to Patent Engineering

Patents have long been recognized as a vital tool in the business world. Patents are designed to give the owner or assignee of the patent a monopolistic position in which to practice the technology described in the patent. In years past, a few patents may have provided adequate protection. That is no longer the case. In today’s world, a solid patent portfolio that is the result of engineering and executing a focused patent strategy is vital to protect your business interests.

Moreover, patents should not be considered solely as defensive legal documents. Rather, they should be considered part of the marketable product stream emanating from your company. If the patent portfolio is good, it can be worth billions of dollars. If it is poorly designed, it can simply be an expense that divulges your technology to your competition.

It is the goal of this book to enable you to develop patent portfolios that both protect your vital technology and have commercial value without burdening your company with undue expenses. To begin this discussion, let us consider your night immediately prior to your big product introduction.

The Night before Product Launch

Your company is about to launch a new product. Perhaps that product will also launch your entrepreneurial company. Alternatively, that product may enhance the profitability of your established company.

The product has many key features that are lacking in competitive offerings. You should be able to capture a large segment of the market and offer your products at a premium price. You have filed patent applications, or perhaps even already obtained issued patents, on the key features. Yet, despite this, you are stressed. Why?