A guide for implementing a patent strategy : how inventors, engineers, scientists, entrepreneurships, and independent innovators can protect their intellectual property / Donald S. Rimai.

Format:

Book

Author/Creator:

Rimai, Don, author.

Series:

THEi Wiley ebooks.

Language:

English

Subjects (All):

Patent laws and legislation--United States.

Patent laws and legislation.

Patents--Economic aspects--United States.

Patents.

Physical Description:

1 online resource (317 pages)

Edition:

1st ed.

Place of Publication:

Hoboken, New Jersey : Wiley, 2018.

System Details:

Access using campus network via VPN at home (THEi Users Only).

Summary:

"This book is aimed at the innovators who drive the advances from which we all benefit.  This includes scientists, engineers, technicians, managers, and entrepreneurs who want to financially benefit from their innovations.  The book describes how to build patent portfolios that will properly protect your technology and be of financial benefit.  The tools that innovators need to have to generate patents are presented in detail"-- Provided by publisher.

"Sales handles: - A sequel to the bestselling book on Patent Engineering published by Wiley-Scrivener in 2016. - The book teaches you how to build a patent portfolio, how to protect and preserve your intellectual property, and how to financial benefit from it. Market description: Primary audience: This book is primarily aimed at scientists, engineers, technicians, managers, and entrepreneurs working in all industries and sectors. Secondary audience: This book would be suitable for engineering, science, and business students seeking understand the value and function of patents"-- Provided by publisher.

Contents:

Cover

Tilte Page

Copyright Page

Contents

Preface

Acknowledgements

1 Background for Developing and Implementing a Patent Strategy

Why Should You be Seeking Patents?

Why Should an Employed Scientist or Engineer Seek to Obtain Patents?

Why Should Entrepreneurs and Companies Seek to Build Patent Portfolios?

Why Should the Independent Innovator Build a Patent Portfolio?

What is a Patent?

What is an Invention?

Why Do I Need a Patent Strategy?

As a Technical Innovator, What Do You Need to Do?

Why Do Technical Team Members Need to Do This? Is this not for Legal Counsel to Do?

References

2 The Structure of a Patent

Information Contained in a Patent Application

Writing Claims

Background of the Invention

Detailed Description of the Invention

Who Are the Inventors?

Concluding Remarks

3 The Path to Obtaining Patents

Introduction

Initial Meeting with Legal Counsel

What You Should Expect from Your Legal Counsel

After Your Patent Attorney or Agent Has Reviewed Your Application(s)

Filing the Application

The Path Forward

4 Identifying Patentable Inventions

Owning the Problem

Identifying Inventions

Determine What Your Competitors Are Doing

File on the Patentable Enabling Technology

Concluding Comments

5 Identifying What Has Yet to Be Invented

Expanding Electrophotographic Printing into New Applications

Lessons Imparted

When Developing Technology in Conjunction with others

6 Prioritizing the Inventions

What Does Prioritizing Inventions Mean?

Why is it Necessary to Prioritize Inventions?

How to Prioritize Inventions

7 Prioritizing Your Patent Applications.

What is the Difference between Prioritizing Inventions and Prioritizing Patent Applications?

Types of Factors Determining Patent Application Priority

Technological Considerations

Temporal Considerations

8 Proposing and Writing Claims

Why Should Inventors Write Claims?

Do You Have More than a Single Invention?

Types of Claims and Inventions

9 Conducting Prior Art Searches

Types of Prior Art Searches

Clearance Searches

Novelty Searches

The Impact of KSR on Novelty Searches

Methods of Conducting a Search

Key Word Searches

Enhancing Searches

Search Engines

The U.S. Patent and Trademark Office

European Patent Offi ce

World Intellectual Property Organization (WIPO)

Google Patents/Google Scholar

Innography

10 The Mindsets of Innovators and Attorneys and other Cautionary Notes

Communications

Of Differing Mindsets

Cautionary Notes

Be Careful About What You Write

Validity of a Patent is a Legal Question

Attorney-Client Privilege

Patents are Very Specific

Solving a Different Problem from that Described in the Prior Art

Consider Using a Patent Engineer

Concluding Remarks: Scientific Papers vs. Patents

11 Reviewing Your Proposed Patent Applications

Look Before You Leap

Is There other Relevant Art?

Redefining the Invention

Are the Proposed Patent Applications Claiming Distinct Inventions?

Do the Proposed Patent Applications Encompass Your Technology?

Will Your Competitors Need Your Patents?

Do You Need Patents Belonging to Others?

Will Your Present Disclosures Compromise Future Applications?

12 Writing Your Patent Applications

Your Intended Audience.

When Writing Your Patent Applications

Claims

Broaden Your Thinking

Refocus Your Invention by Redefining the Problem

Detailed Description of the Invention - The Intended Audience

The Detailed Description of the Invention

Figures

Other Sections of a Patent and Their Intended Audiences

Other Information that You Will Have to Provide

13 The Next Step: Prosecution of Your Patent Application

Meeting with Your Legal Advisors

Submission of Your Patent Application

Prosecution of Your Patent Applications

Initial Screening by the Examiner

Conducting a Prior Art Search

Responding to an Office Action

Rejections, Final Rejections, and RCEs

Interviewing the Examiner and Filing Appeals

Appealing a Decision and Abandoning an Application

Final Comments

14 What Next?

Divisionals, Continuations, and Continuations-in-Part

Maintenance Fees

Negotiating Cross-Licensing Agreements and Licensing Fees

Demonstrating Infringements in Advance of An Assertion

Filing Patent Applications Internationally

Further Patenting Opportunities

15 Final Thoughts

In Case of a Tight Deadline: Provisional Patent Applications

The Cost of Building and Maintaining a Patent Portfolio Is More Than I Can Afford

Appendix 1 Electrophotography: Building a Patent Portfolio in a Mature but Evolving Field

Background

The Electrophotographic Process

Photoreceptor

Development, Developer, and Toner

Charging

Producing the Electrostatic Latent Image

Transfer

Fusing

Opportunities for Building a Patent Portfolio in a Mature but Technologically Evolving Field

Index

EULA.

Notes:

Includes bibliographical references and index.

Description based on print version record.

ISBN:

9781119407133

1119407133

9781119407102

1119407109

9781119407119

1119407117

OCLC:

1078996653