Patent Strategy

For Researchers and Research Managers

H. Jackson Knight

• Publisher: Wiley
• Year: 2012
• Print ISBN: 9780470057759, 9780470057742
• eBook ISBN: 9781118314258
• Edition: 3
• Topic: Law
• Subtopic: Intellectual Property Law
• Index: Law

As individuals and companies realise the importance of their inventions, issues surrounding patent laws and practices are taking centre stage around the world.

Patent Strategy introduces researchers to patent applications and patent portfolios. With minimum use of 'legal jargon' it provides the technical professional with the assistance and advice they require to understand the legal complexities that they may encounter before and during a patent application. It also discusses the responsibilities of the researcher after patent applications have been filed and the role the researcher can play in the maintenance of a global patent estate.

This updated edition of the best selling book has been expanded to keep pace with modern day movements and addresses the global issue surrounding intellectual property. Including new information on areas such as software and biotechnology it shows the techniques that can be used by individuals and academic inventors to protect their work and is the ideal reference source.

• Bridges the gap between the legal system and scientific research and avoids legal jargon
• Details the reasons behind patents, their importance and relevance to all researchers and the strategy needed for filing for a patent
• Focuses on the strategy and reasons rather than just being a textbook of patent law
• Presents an overview of tools a researcher can use while working with a patent attorney or agent
• Adopts a readable style that explains the basics right up to developing a strategy
• Essential reading for all those who wish to keep pace and protect their work

Reviews from previous edition:

"...I can recommend it for technology managing types. Does a nice job of explaining many aspects of the patent system and patent strategies with a minimum of jargon and case citations..."
—Internet Patent News

"...provides an enlightened approach to a complex subject. It is relatively easy to read and follow..."
— Polymers Paint and Colour Journal

"This handy book provides the researcher with useful guidance on how to maximize the benefit of their inventiveness to themselves and their organization".
—Journal of Chemical Technology and Biotechnology

Chapter 1

Basic Intellectual Property Concepts

1.1 Introduction

To develop a patent strategy, a researcher or a research manager must be familiar with certain intellectual property concepts, and this chapter is designed to provide that intellectual property foundation. As stated in the Preface, this book is not a ‘patent law’ book. There are many ‘patent law’ books on the market and many continuing education courses that teach patent law fundamentals. This book will attempt to provide the researcher or research manager with the minimum information required to help develop an intellectual property or patent strategy with a patent professional. Patent professionals—patent attorneys and patent agents that prepare, file, and prosecute patent applications; patent liaisons that coordinate patent filings in larger companies; and information specialists that search the prior art—all play an important part in the development of the overall strategy of a business. The researcher's exact involvement with these professionals will depend in great part on whether or not the inventor is a private researcher or an employee of a large corporation.

In any case, the researcher will still need to rely on professionals for help with patent law matters. There are three reasons for this. First of all, it is impossible to cover all aspects of global patent law in one chapter. The second reason is that, while one can develop and implement a patent strategy, should there be a need to interpret patents legally, the best person to provide guidance in patent law and negotiate the legal realm is a good patent attorney. Finally, laws are not like fundamental scientific principles; they are at the mercy of governments, and laws change, sometimes dramatically. Again, a patent agent or attorney should be able to keep up with these changes and advise on how they impact research work. There are no better examples of the need for the help of a knowledgeable patent attorney or agent than the recent developments in high growth areas like biotechnology, software, business methods, and the internet. Change is occurring in these areas at a high rate, not only in the generation of inventions, but also in the methods by which these inventions are protected. Over the last few years, countries around the world have had a constant flow of new laws affecting the patentability of inventions in these areas. Patent offices have also had a steady stream of new guidelines, rules, and regulations affecting patent applications in these same areas. Only a patent attorney or agent can possibly keep up with all of these changes. A researcher can get an idea of the extent of the changes by looking to the internet. A quick check of intellectual property pages will reveal the massive number of new issues involved in these technology areas. It is hoped that the information presented here will be of a basic nature, so that it will not appreciably change in the near future.

1.2 Basic Patent Law Concepts

A patent is a legal grant by a government. Governments establish patent systems and grant patents to encourage innovation, technical development, and ultimately economic prosperity. The terms of the grant are quite simple; in return for disclosing an invention publicly so that others can learn from it, and paying the processing fees, the government of the country will grant the inventor of the invention the right to exclude others from making, using, or selling the invention for a limited period of time.

The first and most fundamental concept to learn about patents is that patents do not give the patent owner the right to practice the invention claimed in the patent, but only to exclude others from practicing this invention. The patent owner may only practice his invention as long as it, or any part of it, is not covered in a valid patent by someone else.

For example, say a researcher hears about a new ceramic material that has been developed, and for illustration purposes, let's say the ceramic material has the chemical name of ‘X’. Further, let's say the researcher's commercial interest in this ceramic is in coffee mugs, because when a coffee mug is made from ‘X’, the coffee can be kept hot indefinitely. The researcher obtains a patent in many different countries having the following claim:

1. A container for keeping hot liquids hot, comprising the ceramic ‘X’.

The practical result of the research obtaining this claim is that in those countries where he has obtained a patent, he can theoretically stop another person or company from making or selling any kind of container made from ‘X’. (The word ‘theoretically’ is used, because the researcher will have to enforce his patent by taking the infringer to court; the court will determine whether or not the patent is valid and infringed.) The claim, however, does not give the researcher the right to make or sell containers containing ‘X’. The researcher can legally make or sell containers containing ‘X’ only if in so doing he doesn't infringe a patent held by another. If the inventor of the ceramic ‘X’ has a patent, say with claims like:

1. A ceramic comprising ‘X’.

The researcher will infringe the ceramic inventor's patent if the researcher makes his own ceramic when he makes his coffee mugs. The inventor's patent is said to dominate the researcher's patent, and if the researcher wants to make coffee mugs using the ceramic, he will need to work out some arrangement with the inventor of the ceramic.

The second basic concept to understand is that a patent is only effective in the country of issue, and legal concepts and questions about ‘What is patentable?’ and ‘What constitutes a valid patent?’ can be interpreted differently in different countries. Since patents are grants from the governments of countries, and all countries are different, then it follows that patent laws will be different in every country around the world. However, countries have realized that cooperative treaties that allow inventors to file patents easily are beneficial in that they provide additional revenue in the form of patent fees, and strong cooperative intellectual property laws provide incentive for businesses to invest in these countries. These cooperative treaties have harmonized some of the basic procedures and requirements for obtaining patents from country to country, although substantial differences still remain in the actual patent law.

A third fundamental concept is that while different countries can have different patent laws, all governments attempt to grant patent rights to the correct inventor(s) or owners of the invention under those laws. However, these patent rights must be claimed by filing a patent application. There have been many stories of the same invention being developed independently by different inventors, with only one inventor obtaining the patent because the government determined that inventor, by law, was due the patent.

In most countries of the world, if two inventors apply for the same invention, the inventor who first submits his application to the government gets the patent. Therefore, in these ‘first-to-file’ countries there is an obvious premium placed on being the first inventor to the patent office to stake your claim. An inventor needs to file his patent application as soon as possible after making the invention to avoid having another inventor possibly preempt his patent rights.

For many years the law in the United States has been different, likely due to the Constitution's emphasis on ‘securing’ rights to inventors for their discoveries. The intent of the law was that the first true inventor should receive the patent rights, not necessarily the first inventor to file his patent application. Therefore, the United States has had a ‘first-to-invent’ system, where the inventor's own personal records of invention could be used to prove an invention date prior to any filing of a patent application. While the ‘filing date’ was important, the ‘invention date’ was even more important, should two inventors independently invent and file on the same invention. The United States has been essentially unique with regard to this provision.

However, US patent law was significantly changed on September 16, 2011, when patent reform legislation was signed into law after many years of negotiation and delay. The Leahy-Smith America Invents Act (AIA) makes a number of significant changes to US patent law to be phased in over 18 months after passage. In addition, the patent law is made more complicated in that certain provisions of the old law will continue to apply for patents granted and patent applications filed prior to the enactment of the new laws.

While many of the provisions of the new law can affect patent strategy, none affects the inventor more than the change that comes into effect on March 16, 2013. Starting that day, the United States moves from being a ‘first-to-invent’ to a ‘first-to-file’ country, although some believe the proper wording should be the ‘first-inventor-to-file’ country. This brings the United States into alignment with most other countries, which are ‘first-to-file’ countries. In any case, this new law adds increased emphasis on the filing of patent applications as soon as possible after an invention has been made.

1.3 Patent Office Operations

Countries set up patent offices to handle the processing of patent applications and the granting of patents. As one might expect, each patent office will have its own rules, regulations, and procedures. While some disputes may be resolved within the individual patent offices, in general, any unresolved dispute will ultimately be settled in the court system of the country.

Although the patent offices of different countries have different procedures, the basic steps taken to obtain a patent are fairly uniform. Assuming a researcher has made an invention, the researcher has a patent agent prepare a patent application and send it to a patent office (that is, ‘file’ the patent application), along with any required filing fees. Depending on the country, the patent office will take one of three actions. The patent office will either (1) start immediately to process the application for patentability, for example, start the examination of the application; or (2) essentially hold the application and wait for the applicant to tell the patent office to examine the application; or (3) register the application without examination....

Table of contents

• Cover
• Title Page
• Copyright
• Dedication
• Preface
• Preface to the Second Edition
• Preface to the First Edition
• About the Author
• Chapter 1: Basic Intellectual Property Concepts
• Chapter 2: The Value of Patents
• Chapter 3: Developing a Strategy
• Chapter 4: Researching with Intellectual Property in Mind
• Chapter 5: Infringement and Freedom to Operate
• Chapter 6: Working with Attorneys, Agents, and Patent Liaisons
• Chapter 7: Disclosure and Filing Decisions
• Chapter 8: After the Filing
• Chapter 9: The Future of Intellectual Property Efforts
• References
• Further Reading
• Index