A Guide for Implementing a Patent Strategy

Description

This book is aimed at the innovators who drive the advances from which we all benefit. This includes scientists, engineers, technicians, managers, and entrepreneurs who want to financially benefit from their innovations. The book describes how to build patent portfolios that will properly protect your technology and be of financial benefit. The tools that innovators need to have to generate patents are presented in detail.

Cover 2
Tilte Page 6
Copyright Page 7
Contents 10
Preface 12
Acknowledgements 14
1 Background for Developing and Implementing a Patent Strategy 16
- Why Should You be Seeking Patents? 16
- Why Should an Employed Scientist or Engineer Seek to Obtain Patents? 17
- Why Should Entrepreneurs and Companies Seek to Build Patent Portfolios? 18
- Why Should the Independent Innovator Build a Patent Portfolio? 19
- What is a Patent? 20
- What is an Invention? 21
- Why Do I Need a Patent Strategy? 25
- As a Technical Innovator, What Do You Need to Do? 26

Cover 2
Tilte Page 6
Copyright Page 7
Contents 10
Preface 12
Acknowledgements 14
1 Background for Developing and Implementing a Patent Strategy 16
- Why Should You be Seeking Patents? 16
- Why Should an Employed Scientist or Engineer Seek to Obtain Patents? 17
- Why Should Entrepreneurs and Companies Seek to Build Patent Portfolios? 18
- Why Should the Independent Innovator Build a Patent Portfolio? 19
- What is a Patent? 20
- What is an Invention? 21
- Why Do I Need a Patent Strategy? 25
- As a Technical Innovator, What Do You Need to Do? 26
- Why Do Technical Team Members Need to Do This? Is this not for Legal Counsel to Do? 28
- References 30
2 The Structure of a Patent 32
- Information Contained in a Patent Application 32
- Writing Claims 34
- Background of the Invention 44
- Detailed Description of the Invention 45
- Who Are the Inventors? 48
- References 49
- Concluding Remarks 49
3 The Path to Obtaining Patents 52
- Introduction 52
- Initial Meeting with Legal Counsel 53
- What You Should Expect from Your Legal Counsel 57
- After Your Patent Attorney or Agent Has Reviewed Your Application(s) 58
- Filing the Application 58
- References 61
- The Path Forward 61
4 Identifying Patentable Inventions 62
- Introduction 62
- Owning the Problem 66
- Identifying Inventions 68
- Determine What Your Competitors Are Doing 73
- File on the Patentable Enabling Technology 74
- Concluding Comments 75
- References 76
5 Identifying What Has Yet to Be Invented 78
- Introduction 78
- Expanding Electrophotographic Printing into New Applications 79
- Lessons Imparted 86
- When Developing Technology in Conjunction with others 88
- Concluding Remarks 89
- References 89
6 Prioritizing the Inventions 92
- What Does Prioritizing Inventions Mean? 92
- Why is it Necessary to Prioritize Inventions? 95
- How to Prioritize Inventions 98
- References 103
- Concluding Remarks 103
7 Prioritizing Your Patent Applications 106
- What is the Difference between Prioritizing Inventions and Prioritizing Patent Applications? 106
- Types of Factors Determining Patent Application Priority 109
- Technological Considerations 109
- Temporal Considerations 116
- Concluding Remarks 120
- References 121
8 Proposing and Writing Claims 122
- Why Should Inventors Write Claims? 122
- Do You Have More than a Single Invention? 124
- Types of Claims and Inventions 125
- Concluding Remarks 143
- References 145
9 Conducting Prior Art Searches 146
- Introduction 146
- Types of Prior Art Searches 147
  - Clearance Searches 147
  - Novelty Searches 148
- The Impact of KSR on Novelty Searches 148
- Methods of Conducting a Search 150
  - Key Word Searches 152
  - Enhancing Searches 153
  - Search Engines 155
  - The U.S. Patent and Trademark Office 156
  - European Patent Offi ce 157
  - Google Patents/Google Scholar 158
  - Innography 158
  - World Intellectual Property Organization (WIPO) 158
- Concluding Remarks 159
- References 159
10 The Mindsets of Innovators and Attorneys and other Cautionary Notes 160
- Communications 160
- Of Differing Mindsets 161
- Be Careful About What You Write 166
- Cautionary Notes 166
- Attorney-Client Privilege 167
- Validity of a Patent is a Legal Question 167
- Patents are Very Specific 168
- Solving a Different Problem from that Described in the Prior Art 168
- Consider Using a Patent Engineer 169
- Concluding Remarks: Scientific Papers vs. Patents 169
- References 170
11 Reviewing Your Proposed Patent Applications 172
- Look Before You Leap 172
- Is There other Relevant Art? 173
- Redefining the Invention 174
- Are the Proposed Patent Applications Claiming Distinct Inventions? 177
- Do the Proposed Patent Applications Encompass Your Technology? 178
- Will Your Competitors Need Your Patents? 179
- Do You Need Patents Belonging to Others? 179
- Will Your Present Disclosures Compromise Future Applications? 180
- Concluding Remarks 181
- References 182
12 Writing Your Patent Applications 184
- Your Intended Audience 184
- When Writing Your Patent Applications 191
- Claims 192
- Background of the Invention 196
  - Broaden Your Thinking 196
  - Refocus Your Invention by Redefining the Problem 197
- Detailed Description of the Invention – The Intended Audience 200
- The Detailed Description of the Invention 203
- Figures 206
- Other Sections of a Patent and Their Intended Audiences 210
- Other Information that You Will Have to Provide 210
- References 211
13 The Next Step: Prosecution of Your Patent Application 214
- Introduction 214
- Meeting with Your Legal Advisors 215
- Submission of Your Patent Application 218
- Prosecution of Your Patent Applications 219
- Initial Screening by the Examiner 220
- Conducting a Prior Art Search 223
- Responding to an Office Action 226
- Rejections, Final Rejections, and RCEs 231
- Interviewing the Examiner and Filing Appeals 232
- Appealing a Decision and Abandoning an Application 233
- Final Comments 234
- References 234
14 What Next? 236
- Introduction 236
- Divisionals, Continuations, and Continuations-in-Part 238
- Maintenance Fees 241
- Negotiating Cross-Licensing Agreements and Licensing Fees 245
- Demonstrating Infringements in Advance of An Assertion 248
- Filing Patent Applications Internationally 254
- Further Patenting Opportunities 256
- References 258
15 Final Thoughts 260
- In Case of a Tight Deadline: Provisional Patent Applications 260
- The Cost of Building and Maintaining a Patent Portfolio Is More Than I Can Afford 263
- Concluding Remarks 267
- References 268
Appendix 1 Electrophotography: Building a Patent Portfolio in a Mature but Evolving Field 270
- Background 270
- The Electrophotographic Process 274
- Photoreceptor 279
- Development, Developer, and Toner 282
- Charging 284
- Producing the Electrostatic Latent Image 286
- Transfer 287
- Fusing 289
- Opportunities for Building a Patent Portfolio in a Mature but Technologically Evolving Field 290
- References 292
Index 294
EULA 318

How Inventors, Engineers, Scientists, Entrepreneurs, and Independent Innovators Can Protect Their Intellectual Property

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