book

Patent Engineering

by Donald S. Rimai

February 2016

Intermediate to advanced

256 pages

7h 19m

English

Wiley-Scrivener

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The Night before Product LaunchThe Value of PatentsImplementing a Patent StrategyGoals of a Patent StrategyExamples and Consequences of Two Patent StrategiesGoal of This Book
The World Changed40 Years AgoThe World TodayThe Role of PatentsInventorsInventionsPreparing to FileThe Five Patent CommandmentsReferences

Five Patent StrategiesA New Strategy: Problem-Specific Filing or “Owning the Problem”Guiding Your Technical Team: The Patent EngineerA Brief Look at Applications, Prosecution, and ClaimsAdditional Goals of a Patent StrategyA Brief Look at Claims, Infringement, and AssertionReferences
Patent Application ProcessClaimsPrior Art and NoveltyObviousnessPatent PractitionerPatent Application ProsecutionValue of a Sound Patent StrategyGoals and Uses of PatentsPatent Engineering and Owning the Problem During the Application ProcessCritical ChallengeTimingPost-Filing ConsiderationsReferences
Patent PractitionersPatent EngineeringPatent StructureWhat a Claim EntailsOpportunities to Enhance Your PortfolioPrior Art SearchesBackground Section of a PatentDetailed Description of the Invention Including the FiguresBenefits of Common DisclosuresA Closer Look at Prior Art Searching
What is a Patent?What is an Invention?Claims and NoveltyProtecting Your Intellectual Property When Dealing with Contractual CompaniesUtilityObviousness and Ordinary Skill in the ArtOrdinary Skill in the Art: An Actual ExampleObviousness: An Actual ExampleOnly One Invention per PatentAsserting Your PatentInventors and InventorshipAddressing Inventorship IssuesReferences
Types of Patents in the United StatesPatentabilityReviewing the Prior Art Search ResultsAddressing Prior Art in Your ApplicationsShould You File Internationally?Hiring a Patent Practitioner and Reviewing Your Patent StrategyProvisional ApplicationsOffice ActionsAbandoning an ApplicationReferences
Legal CostsIndirect CostsFees Charged by the Patent OfficeAvoidable Costs
The Case for Building an International PortfolioAdditional Factors Driving International Patent FilingsBuilding an International Portfolio and its RisksCosts of Building an International PortfolioBuilding an International Portfolio: Making ChoicesManufacturing and Marketing ConsiderationsContaining Costs and Adjusting DisclosuresPatent Cooperation Treaty (PCT) and International Searching Authority (ISA)The Role of International Patents in Owning the ProblemDesignating Focus and Satellite CountriesReferences
Difference between Patentability and Clearance SearchesConsiderations Related to ClaimsLimitations on Claims: Means Plus FunctionDoctrine of EquivalentsWillful InfringementConducting a Clearance SearchWhat Should Be Cleared?In Which Countries Should a Clearance Search Be Conducted?When Should a Clearance Search Be Conducted?How to Conduct a Clearance SearchSome Cautionary NotesIf Your Product Appears to InfringeClearance Analysis and MemorandaReferences
What is a Patent Engineer?The Patent Engineer in a CorporationBroadening Your Patent Portfolio—An ExampleHow the Technical Teams Benefit by Interaction with a Patent EngineerThe Role of the Patent Engineer in Joint Product Development ProjectsNondisclosure AgreementsPatent Engineers and Patent ProsecutionPatent Engineers and ClearancesThe Role of the Patent Engineer in Patent RenewalsPatent Engineers and AssertionsPatent Engineers and UniversitiesImplementation of a Patent Strategy at a UniversityThe Role of a Patent Engineer in a Law FirmThe Patent Engineer and Investment FirmsControlling the MarketplaceReferences