Patent Engineering

Book description

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.

Table of contents

  1. Cover
  2. Half Title page
  3. Title page
  4. Copyright page
  5. Dedication
  6. Preface
  7. Acknowledgements
  8. About the Author
  9. Chapter 1: An Introduction to Patent Engineering
    1. The Night before Product Launch
    2. The Value of Patents
    3. Implementing a Patent Strategy
    4. Goals of a Patent Strategy
    5. Examples and Consequences of Two Patent Strategies
    6. Goal of This Book
  10. Chapter 2: Patents and Patent Strategies—What They Are and Why You Need Them
    1. The World Changed
    2. 40 Years Ago
    3. The World Today
    4. The Role of Patents
    5. Inventors
    6. Inventions
    7. Preparing to File
    8. The Five Patent Commandments
    9. References
  11. Chapter 3: Developing a Patent Strategy and Patent Engineering
    1. Five Patent Strategies
    2. A New Strategy: Problem-Specific Filing or “Owning the Problem”
    3. Guiding Your Technical Team: The Patent Engineer
    4. A Brief Look at Applications, Prosecution, and Claims
    5. Additional Goals of a Patent Strategy
    6. A Brief Look at Claims, Infringement, and Assertion
    7. References
  12. Chapter 4: Implementing Patent Strategies and the Application Process through Patent Engineering
    1. Patent Application Process
    2. Claims
    3. Prior Art and Novelty
    4. Obviousness
    5. Patent Practitioner
    6. Patent Application Prosecution
    7. Value of a Sound Patent Strategy
    8. Goals and Uses of Patents
    9. Patent Engineering and Owning the Problem During the Application Process
    10. Critical Challenge
    11. Timing
    12. Post-Filing Considerations
    13. References
  13. Chapter 5: The Structure of a Patent
    1. Patent Practitioners
    2. Patent Engineering
    3. Patent Structure
    4. What a Claim Entails
    5. Opportunities to Enhance Your Portfolio
    6. Prior Art Searches
    7. Background Section of a Patent
    8. Detailed Description of the Invention Including the Figures
    9. Benefits of Common Disclosures
    10. A Closer Look at Prior Art Searching
  14. Chapter 6: Inventions and Inventorship: Challenges and Complications
    1. What is a Patent?
    2. What is an Invention?
    3. Claims and Novelty
    4. Protecting Your Intellectual Property When Dealing with Contractual Companies
    5. Utility
    6. Obviousness and Ordinary Skill in the Art
    7. Ordinary Skill in the Art: An Actual Example
    8. Obviousness: An Actual Example
    9. Only One Invention per Patent
    10. Asserting Your Patent
    11. Inventors and Inventorship
    12. Addressing Inventorship Issues
    13. References
  15. Chapter 7: Patent Engineering and Patent Prosecution
    1. Types of Patents in the United States
    2. Patentability
    3. Reviewing the Prior Art Search Results
    4. Addressing Prior Art in Your Applications
    5. Should You File Internationally?
    6. Hiring a Patent Practitioner and Reviewing Your Patent Strategy
    7. Provisional Applications
    8. Office Actions
    9. Abandoning an Application
    10. References
  16. Chapter 8: Controlling the Costs of Generating and Maintaining a Patent Portfolio through Patent Engineering
    1. Legal Costs
    2. Indirect Costs
    3. Fees Charged by the Patent Office
    4. Avoidable Costs
  17. Chapter 9: Patent Engineering in a Global Economy
    1. The Case for Building an International Portfolio
    2. Additional Factors Driving International Patent Filings
    3. Building an International Portfolio and its Risks
    4. Costs of Building an International Portfolio
    5. Building an International Portfolio: Making Choices
    6. Manufacturing and Marketing Considerations
    7. Containing Costs and Adjusting Disclosures
    8. Patent Cooperation Treaty (PCT) and International Searching Authority (ISA)
    9. The Role of International Patents in Owning the Problem
    10. Designating Focus and Satellite Countries
    11. References
  18. Chapter 10: Avoiding an Infringement Lawsuit through Patent Clearances
    1. Difference between Patentability and Clearance Searches
    2. Considerations Related to Claims
    3. Limitations on Claims: Means Plus Function
    4. Doctrine of Equivalents
    5. Willful Infringement
    6. Conducting a Clearance Search
    7. What Should Be Cleared?
    8. In Which Countries Should a Clearance Search Be Conducted?
    9. When Should a Clearance Search Be Conducted?
    10. How to Conduct a Clearance Search
    11. Some Cautionary Notes
    12. If Your Product Appears to Infringe
    13. Clearance Analysis and Memoranda
    14. References
  19. Chapter 11: The Role of the Patent Engineer
    1. What is a Patent Engineer?
    2. The Patent Engineer in a Corporation
    3. Broadening Your Patent Portfolio—An Example
    4. How the Technical Teams Benefit by Interaction with a Patent Engineer
    5. The Role of the Patent Engineer in Joint Product Development Projects
    6. Nondisclosure Agreements
    7. Patent Engineers and Patent Prosecution
    8. Patent Engineers and Clearances
    9. The Role of the Patent Engineer in Patent Renewals
    10. Patent Engineers and Assertions
    11. Patent Engineers and Universities
    12. Implementation of a Patent Strategy at a University
    13. The Role of a Patent Engineer in a Law Firm
    14. The Patent Engineer and Investment Firms
    15. Controlling the Marketplace
    16. References
  20. Index

Product information

  • Title: Patent Engineering
  • Author(s): Donald S. Rimai
  • Release date: February 2016
  • Publisher(s): Wiley-Scrivener
  • ISBN: 9781118946091