How to Invent and Protect Your Invention A

While almost all chemists and polymer scientists in industry are involved with potentially patentable work, American graduate students are under-exposed to and unprepared for this all-important field. They are unaware of the importance of U.S. Patent Law and patent practices in shaping their daily industrial existence and future. This book provides a clear, jargon-free, and comprehensive overview of the patent application process. The chapters included discuss how to invent, how to get inventions patented, and how market inventions after securing a patent. In 2011 President Obama signed into law the Leahy-Smith America Invents Act, a sweeping reform of the U.S, patent system. Among the more important changes in the law are that the U.S. is shifting to a first-inventor-to-file system (and abandons the first-to-invent system), which is more closely harmonized with many other countries. Further, the new law expressly forbids the issue of a claim "directed to or encompassing" a human organism; allows challenging the validity of a claim by third parties after a patent was granted; and gives the Director of the Patent Office the power to set patent fees. It also provides for limited post grant review which allows patents to be invalidated after they have been granted.

JOSEPH P. KENNEDY, PhD, MBA, FACS, is a Distinguished Professor of Polymer Science and Chemistry at The University of Akron. He has authored four scientific books and more than 700 publications, and is the inventor of more than 100 issued U.S. patents, which have generated billions of dollars in revenue. His research interests include ionic polymerization and the design and creation of useful polymeric materials, particularly for medical applications.

WAYNE H. WATKINS, BS (engineering), MBA, JD, is Associate Vice President for Research at The University of Akron, adjunct professor of law, and Vice President of the University of Akron Research Foundation where he leads technology commercialization initiatives. He has particular expertise in intellectual property management and new enterprise creation and growth. He is a principal in three companies in chemistry and biotechnology.

ELYSE N. BALL, BS (journalism), JD, is a Project Manager for the University of Akron Research Foundation where she regularly works on technology licensing projects and supporting university startup companies. She is involved in technology development in the polymer science, advanced energy, and biomedical fields.

PREFACE: HOW THIS BOOK CAME TO BE AND FORWHOM IT IS WRITTEN xi

ACKNOWLEDGMENTS xix

ABBREVIATIONS xxi

1. THE U.S. PATENT SYSTEM 1

1.1. What is a Patent? 1

1.2. Why Should You File A Patent? 5

2. ORIGINS OF U.S. PATENT LAW 7

2.1. A Brief History of Patent Law 8

2.2. The Fountainhead: The Constitution and the U.S. Patent System 9

2.3. Are Patents a Monopoly? 11

3. HOW TO INVENT: INTELLECTUAL ASPECTS OF INVENTING 12

3.1. On the Definition of Creativity 12

3.2. A Flaw in Patent Law 13

3.3. Patentable Creativity 14

3.4. Intellectual Requirements of Inventing 15

3.5. The Process and Product of Inventing 16

3.6. Pioneering versus Mediocre Inventions: The Touch of the Expert 17

3.7. The Importance of Industrial Experience 17

3.8. The Ultimate Goal: Innovation 18

4. A SHORT SUMMARY OF INTELLECTUAL PROPERTY 20

4.1. Patents 21

4.2. Trade Secrets 21

4.3. Copyrights 22

4.4. Trademarks and Servicemarks 23

4.5. Other Types of Intellectual Property 24

5. REQUIREMENTS OF PATENTABILITY 26

5.1. What is Patentable? 26

5.2. Patentable and NonPatentable Subject Matter 27

5.3. The Three Classes of Patents 28

5.4. The First Law of Inventing 28

5.5. The Second Law of Inventing 44

5.6. The Structure of the Patent Document 48

6. HOW DOES THE PATENT PROCESS WORK? 55

6.1. The Notebook 56

6.2. The Provisional Patent Application 56

6.3. The (Regular or Nonprovisional) Patent Application 58

6.4. Prosecution: Convincing the Patent Examiner 60

6.5. Continuation, Continuation-in-Part, and Divisional Applications 64

6.6. Allowance and Issuance 68

6.7. Loss of Patent Rights 68

6.8. Challenges and Changes to Issued Patents 69

6.9. Summary of Chapters 5 and 6 73

7. INFRINGEMENT AND FREEDOM TO OPERATE 74

7.1. The Parable of the Knife 75

7.2. Types of Infringement 77

7.3. Infringement Suits 79

7.4. When to Sue an Infringer 80

7.5. Freedom to Operate 80

7.6. Prior Commercial Use Rights 82

8. BIOTECHNOLOGY, COMPUTER SOFTWARE, AND BUSINESS METHOD PATENTS 84

8.1. Biology Meets Patents 85

8.2. Computer Software Patents 89

8.3. Business Method Patents 90

9. WHO IS THE INVENTOR? 91

9.1. Conceiving an Inventive Idea 92

9.2. Joint Inventors 93

9.3. Naming Inventors on Patent Applications 95

9.4. Qualifications to Be an Inventor 95

10. OWNERSHIP 96

10.1. Selling, Licensing and Assigning Patents 97

10.2. Hired-to-Invent and Shop Rights 97

10.3. Inventing on Your Own Time 98

10.4. Non-Compete Agreements 98

10.5. The Bayh–Dole Act 99

11. TRANSLATING IDEAS INTO ECONOMIC REWARD 102

11.1. The Costs of Patenting 102

11.2. Assessment 104

11.3. Selling and Licensing a Patent 110

11.4. Start-Ups, Spin-Outs, and Joint Ventures 112

11.5. Patenting and Marketing Departments; Technology Transfer Offices 113

11.6. Patent Valuation 114

12. FOREIGN PATENTS 116

12.1. Distinctive Features of U.S. Patent Law 117

12.2. The International Patent Cooperation Treaty 118

12.3. The European Patent Union 120

12.4. Other Foreign Patent Practices 121

12.5. Enforcing Patents Abroad 123

12.6. Choosing Whether to File a Foreign Patent Application 124

13. INNOVATION 125

13.1. Innovation Is More Than Invention 125

13.2. What Drives Innovation 126

13.3. The Law of Innovation 126

13.4. Companies and Innovation 127

13.5. The Innovation and Job Creation Relationship 127

13.6. Discovery Push versus Market Pull Innovation 128

13.7. Incremental versus Disruptive Innovation 128

13.8. Sources of Innovation 129

13.9. Innovation and Public Policy 129

14. CONCLUDING THOUGHTS 131

14.1. Is the Patent System Worth the Costs? 131

14.2. The Patent System Leads to Additional Research and Knowledge Creation 133

14.3. Fostering Competition 134

14.4. Results of Ignorance of the Patent System 135

14.5. How Law and Technology Yield Patents 136

APPENDIX 1: IMPORTANT FORMS 139

APPENDIX 2: SELF-ASSESSMENT QUESTIONS 177

GLOSSARY 196

INDEX 209

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How to Invent and Protect Your Invention A Guide to Patents for Scientists and Engineers

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