Patent Strategy : For Researchers and Research Managers

by Knight, H. Jackson

• ISBN13: 9780471492610
• ISBN10: 0471492612
• Edition: 2nd
• Format: Paperback
• Copyright: 2001-08-08
• Publisher: WILEY

Summary

As individuals and companies realise the importance of their inventions, issues surrounding patent laws and practices are taking centre stage around the world. 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 * 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 of the First Edition "...fulfills a most useful purpose, is soundly based and discusses patent strategy sensibly. I should like it to be compulsory reading for all newly-appointed research managers." S. M Scott - Research Policy "...should be recommended reading for both researchers and their managers, and those who work with them." Michael Blackman - Journal of Chemical Technology and Biotechnology

Table of Contents

Preface	xi
Preface to the First Edition	xiii
About the Author	xvii
Basic Intellectual Property Concepts	1	(40)
Introduction	1	(1)
Basic Patent Law Concepts	2	(1)
Patent Office Operations	3	(3)
Requirements for Obtaining a Patent	6	(3)
Types of Patents	9	(2)
Parts of a Patent	11	(5)
The Term of a Patent	16	(4)
Definitions of Commonly Used Terms	20	(4)
International Treaties	24	(1)
The Paris Convention	25	(2)
Inter-American Convention	27	(1)
The Patent Cooperation Treaty	28	(4)
The European Patent Convention	32	(1)
The African Intellectual Property Organization	33	(1)
The African Regional Industrial Property Organization	34	(1)
Eurasian Patent Convention	35	(1)
Copyrights, Trademarks, and Trade Secrets	36	(1)
Copyrights	36	(1)
Trademarks	37	(1)
Trade Secrets	37	(1)
Other Resources	38	(3)
The Value of Patents	41	(24)
Exclusivity - The Desired Goal	41	(7)
The Mechanics of Achieving Exclusivity in a Technology Area	48	(6)
Traps and Misconceptions - What Patents Can't Do	54	(3)
The Informational Value of Patents	57	(2)
Assigning Value to Patents	59	(4)
Licensing of Patents	63	(2)
Developing a Strategy	65	(52)
Professional Help	65	(2)
Determining Whether or Not an Invention is Patentable	67	(1)
Defining Strategy	68	(2)
The Principles Behind the Strategy - The Military Model	70	(1)
Developing a Patent Strategy Model	71	(13)
Questions for Specific Types of Strategies	84	(1)
Developing a Patent Strategy for an Invention	84	(12)
Developing a Patent Strategy for a Series of Inventions	96	(7)
Developing a Patent Strategy for an Existing Product	103	(3)
Developing a Strategy for Licensing Products	106	(2)
Developing a Strategy for Handling a Potentially Adverse Patent	108	(3)
Developing a Strategy for Oddball Inventions	111	(3)
Dealing With Inventors When Patent Applications Are Not Filed	114	(1)
Coordination of Other Strategies and Patent Strategy	115	(2)
Researching With Intellectual Property in Mind	117	(20)
Introduction	117	(1)
Characteristics of Prolific Inventors	118	(5)
Characteristics of Casual Inventors	123	(2)
The Inventive Process	125	(3)
Fostering Inventive Activity	128	(4)
Suggestions On How to Conduct Research for Stronger Patents	132	(5)
Infringement and Freedom to Operate	137	(10)
Types of Infringement	137	(2)
Avoiding Patent Infringement	139	(3)
Dealing With Infringers	142	(1)
Research Disclosures and Journal Articles	143	(2)
Published Patent Applications and Provisional Patent Coverage	145	(2)
Working With Attorneys, Agents, and Liaisons	147	(12)
Introduction	147	(1)
Preparing for the Legal World	148	(1)
Actions to Take Before Meeting With the Agent	149	(2)
Typical Working Arrangements with Agents	151	(1)
The Researcher's Responsibility for Technical Details	152	(1)
Aloofness	153	(2)
Experimentation For the Patent Application	155	(1)
Patent Liaisons and Other Intellectual Property Professionals	156	(3)
Disclosure and Filing Decisions	159	(16)
Introduction	159	(1)
Controlling the Disclosure of Technology	159	(1)
The Filing Decision	160	(2)
Filing Globally	162	(2)
The Cost of Broadly Filed Patent Applications	164	(1)
The Legal Systems of Individual Countries	165	(2)
Techniques for Determining Which Countries Will be of Value	167	(2)
World Growth and Economic Power	169	(1)
Templates	170	(1)
Timing of Application Filings	170	(2)
Global Experts	172	(1)
Agreement With Strategy	172	(3)
After the Filing	175	(8)
Introduction	175	(1)
Anticipating the First Response From a Patent Office	175	(1)
Modification of Claims	176	(2)
Research After the Filing	178	(2)
Maintaining Cohesion	180	(1)
Issuance and Maintenance of Patents	181	(2)
The Future of Intellectual Property Efforts	183	(4)
References	187	(4)
Further Reading	191	(4)
Index	195