Patents for Business

The Manager's Guide to Scope, Strategy, and Due Diligence

M. Henry Heines

• Publisher: Praeger
• Year: 2007
• Print ISBN: 9780275993375
• eBook ISBN: 9781573567046
• Edition: 1
• Topic: Business
• Subtopic: Business Strategy
• Index: Business

In a world where your intellectual property is your most valuable asset, patents are becoming an essential tool for achieving and maintaining a competitive edge. With billions of dollars at stake, companies are defending their patents vigorously; high-profile cases, such as Microsoft's $900 million patent dispute settlement with Sun Microsystems, and Medtronic's acquisition of a competitor's entire patent portfolio for $1.35 billion, are cases in point. While most companies will not operate at this level, the strategic management of patents, and the costs of enforcing and defending them, are becomining critical business functions. In this accessible and practical guide, Henry Heines shows readers how to apply due diligence, a common concept in corporate finance and investing, to analyze the costs and benefits of patent management, and to navigate through the legal and technical maze. With dozens of examples from many industries, he walks readers through the various ways in which technological advances can be presented as patentable inventions and in which the patents of competitors can be confronted and evaluated. He also offers guidance in managing a portfolio of patents and inventions, regardless of whether they make it to market as products. A glossary of terms and listing of resources will make this book a handy reference for anyone involved in product development, corporate strategy, or intellectual property.

Table of contents

• Contents
• List of Figures
• Preface
• Chapter 1 Being Prepared for Due Diligence
• Chapter 2 What Is Patentable? Mining the Technology Platform
• Chapter 3 The Power to Exclude: Claim Scope and Strategy
• Chapter 4 Monopoly or Maze? The Board Game Approach to Claim Analyses
• Chapter 5 Identifying Prior Art: The First Step in Determining Patentability
• Chapter 6 Novelty and Nonobviousness: The Second Step in Determining Patentability
• Chapter 7 Freedom to Operate
• Chapter 8 Patent Portfolio Referencing
• Chapter 9 Multinational Patent Filing
• Chapter 10 Inventors, Joint Inventors, and Unwilling Inventors
• Chapter 11 Interim Protection for Inventions: Nondisclosure Agreements and Provisional Patent Applications
• Glossary
• References and Supplementary Materials
• Index
• Figure 4.1. Claim Set as a Two-Dimensional Diagram: First Example
• Figure 4.2. Claim Set as a Two-Dimensional Diagram: Second Example
• Figure 4.3. Claim Set as a Two-Dimensional Diagram: Third Example
• Figure 5.1. U.S. Pre-Grant Publication, Cover Page: First Example
• Figure 5.2. U.S. Pre-Grant Publication, Cover Page: Second Example
• Figure 5.3. U.S. Patent, Cover Page
• Figure 5.4. U.S. Defensive Publication, Cover Page
• Figure 5.5. U.S. Statutory Invention Registration, Cover Page
• Figure 5.6. U.S. Design Patent, Cover Page
• Figure 5.7. Published International (PCT) Patent Application, Cover Page
• Figure 5.8. Published European Patent Application, Cover Page
• Figure 5.9. Published Japanese Patent Application (Kokai), Cover Page
• Figure 5.10. Granted Japanese Patent (Kokoku), Cover Page
• Figure 5.11. Published Chinese Patent Application, Cover Page
• Figure 5.12. Time Scale: Oral Presentations as Prior Art
• Figure 5.13. Time Scale: Published Materials as Prior Art
• Figure 5.14. Time Scale: Patents as Prior Art
• Figure 7.1. Decision Tree for Basic U.S. Patent Term
• Figure 7.2. Cover Page of U.S. Patent Illustrating Basic Term Determination: First Example
• Figure 7.3. Cover Page of U.S. Patent Illustrating Basic Term Determination: Second Example
• Figure 7.4. Cover Page of U.S. Patent Illustrating BasicTerm Determination: Third Example
• Figure 7.5. Cover Page of U.S. Patent Illustrating Extension of Basic Term
• Figure 7.6. Cover Page of U.S. Patent Illustrating Truncation of Basic Term by Terminal Disclaimer