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

Book Description

A straightforward guide to inventing, patenting, and technology commercialization for scientists and engineers

Although chemists, physicists, biologists, polymer scientists, and engineers in industry are involved in potentially patentable work, they are often under-prepared for this all-important field. This book provides a clear, jargon-free, and comprehensive overview of the patenting process tailored specifically to the needs of scientists and engineers, including:

  • Requirements for a patentable invention

  • How to invent

  • New laws created by President Obama's 2011 America Invents Act

  • The process of applying for and obtaining a patent in the U.S. and in foreign countries

  • Commercializing inventions and the importance of innovation

Based on lecture notes refined over twenty-five years at The University of Akron, How to Invent and Protect Your Invention contains practical advice, colorful examples, and a wealth of personal experience from the authors.

Table of Contents

  1. Cover
  2. Title Page
  3. Copyright
  4. Preface: How this Book Came To Be and for Whom it is Written
  5. Acknowledgments
  6. Abbreviations
  7. Chapter 1: The U.S. Patent System
    1. 1.1 WHAT IS A PATENT?
    2. 1.2 WHY SHOULD YOU FILE A PATENT?
  8. Chapter 2: Origins of U.S. Patent Law
    1. 2.1 A BRIEF HISTORY OF PATENT LAW
    2. 2.2 THE FOUNTAINHEAD: THE CONSTITUTION AND THE U.S. PATENT SYSTEM
    3. 2.3 ARE PATENTS A MONOPOLY?
  9. Chapter 3: How to Invent: Intellectual Aspects of Inventing*
    1. 3.1 ON THE DEFINITION OF CREATIVITY
    2. 3.2 A FLAW IN PATENT LAW
    3. 3.3 PATENTABLE CREATIVITY
    4. 3.4 INTELLECTUAL REQUIREMENTS OF INVENTING
    5. 3.5 THE PROCESS AND PRODUCT OF INVENTING
    6. 3.6 PIONEERING VERSUS MEDIOCRE INVENTIONS: THE TOUCH OF THE EXPERT
    7. 3.7 THE IMPORTANCE OF INDUSTRIAL EXPERIENCE
    8. 3.8 THE ULTIMATE GOAL: INNOVATION
  10. Chapter 4: A Short Summary of Intellectual Property
    1. 4.1 PATENTS
    2. 4.2 TRADE SECRETS
    3. 4.3 COPYRIGHTS
    4. 4.4 TRADEMARKS AND SERVICEMARKS
    5. 4.5 OTHER TYPES OF INTELLECTUAL PROPERTY
  11. Chapter 5: Requirements of Patentability
    1. 5.1 WHAT IS PATENTABLE?
    2. 5.2 PATENTABLE AND NONPATENTABLE SUBJECT MATTER
    3. 5.3 THE THREE CLASSES OF PATENTS
    4. 5.4 THE FIRST LAW OF INVENTING
    5. 5.5 THE SECOND LAW OF INVENTING
    6. 5.6 THE STRUCTURE OF THE PATENT DOCUMENT
  12. Chapter 6: How Does the Patent Process Work?
    1. 6.1 THE NOTEBOOK
    2. 6.2 THE PROVISIONAL PATENT APPLICATION
    3. 6.3 THE (REGULAR OR NONPROVISIONAL) PATENT APPLICATION
    4. 6.4 PROSECUTION: CONVINCING THE PATENT EXAMINER
    5. 6.5 CONTINUATION, CONTINUATION-IN-PART, AND DIVISIONAL APPLICATIONS
    6. 6.6 ALLOWANCE AND ISSUANCE
    7. 6.7 LOSS OF PATENT RIGHTS
    8. 6.8 CHALLENGES AND CHANGES TO ISSUED PATENTS
    9. 6.9 SUMMARY OF CHAPTERS 5 AND 6
  13. Chapter 7: Infringement and Freedom to Operate
    1. 7.1 THE PARABLE OF THE KNIFE
    2. 7.2 TYPES OF INFRINGEMENT
    3. 7.3 INFRINGEMENT SUITS
    4. 7.4 WHEN TO SUE AN INFRINGER
    5. 7.5 FREEDOM TO OPERATE
    6. 7.6 PRIOR COMMERCIAL USE RIGHTS
  14. Chapter 8: Biotechnology, Computer Software, and Business Method Patents
    1. 8.1 BIOLOGY MEETS PATENTS
    2. 8.2 COMPUTER SOFTWARE PATENTS
    3. 8.3 BUSINESS METHOD PATENTS
  15. Chapter 9: Who is the Inventor?
    1. 9.1 CONCEIVING AN INVENTIVE IDEA
    2. 9.2 JOINT INVENTORS
    3. 9.3 NAMING INVENTORS ON PATENT APPLICATIONS
    4. 9.4 QUALIFICATIONS TO BE AN INVENTOR
  16. Chapter 10: Ownership
    1. 10.1 SELLING, LICENSING AND ASSIGNING PATENTS
    2. 10.2 HIRED-TO-INVENT AND SHOP RIGHTS
    3. 10.3 INVENTING ON YOUR OWN TIME
    4. 10.4 NON-COMPETE AGREEMENTS
    5. 10.5 THE BAYH–DOLE ACT
  17. Chapter 11: Translating Ideas into Economic Reward
    1. 11.1 THE COSTS OF PATENTING
    2. 11.2 ASSESSMENT
    3. 11.3 SELLING AND LICENSING A PATENT
    4. 11.4 START-UPS, SPIN-OUTS, AND JOINT VENTURES
    5. 11.5 PATENTING AND MARKETING DEPARTMENTS; TECHNOLOGY TRANSFER OFFICES
    6. 11.6 PATENT VALUATION
  18. Chapter 12: Foreign Patents
    1. 12.1 DISTINCTIVE FEATURES OF U.S. PATENT LAW
    2. 12.2 THE INTERNATIONAL PATENT COOPERATION TREATY
    3. 12.3 THE EUROPEAN PATENT UNION
    4. 12.4 OTHER FOREIGN PATENT PRACTICES
    5. 12.5 ENFORCING PATENTS ABROAD
    6. 12.6 CHOOSING WHETHER TO FILE A FOREIGN PATENT APPLICATION
  19. Chapter 13: Innovation
    1. 13.1 INNOVATION IS MORE THAN INVENTION
    2. 13.2 WHAT DRIVES INNOVATION
    3. 13.3 THE LAW OF INNOVATION
    4. 13.4 COMPANIES AND INNOVATION
    5. 13.5 THE INNOVATION AND JOB CREATION RELATIONSHIP
    6. 13.6 DISCOVERY PUSH VERSUS MARKET PULL INNOVATION
    7. 13.7 INCREMENTAL VERSUS DISRUPTIVE INNOVATION
    8. 13.8 SOURCES OF INNOVATION
    9. 13.9 INNOVATION AND PUBLIC POLICY
  20. Chapter 14: Concluding Thoughts
    1. 14.1 IS THE PATENT SYSTEM WORTH THE COSTS?
    2. 14.2 THE PATENT SYSTEM LEADS TO ADDITIONAL RESEARCH AND KNOWLEDGE CREATION
    3. 14.3 FOSTERING COMPETITION
    4. 14.4 RESULTS OF IGNORANCE OF THE PATENT SYSTEM
    5. 14.5 HOW LAW AND TECHNOLOGY YIELD PATENTS
  21. Appendix 1: Important Forms
    1. A. INVENTION DISCLOSURE FORM
    2. B. MATERIAL TRANSFER AGREEMENT
    3. C. EMPLOYMENT AGREEMENT
    4. D. PATENT ASSIGNMENT AGREEMENT
    5. E. NON-DISCLOSURE AGREEMENT
    6. F. INFORMATION DISCLOSURE STATEMENT
    7. G. INVENTOR'S OATH
    8. H. PATENT LICENSE AGREEMENT
    9. I. SPONSORED RESEARCH AGREEMENT
    10. J. JOINT OWNERSHIP AGREEMENT
  22. Appendix 2: Self-Assessment Questions
    1. CHAPTER 1. THE U.S. PATENT SYSTEM
    2. CHAPTER 2. ORIGINS OF U.S. PATENT LAW
    3. CHAPTER 3. INTELLECTUAL ASPECTS OF INVENTING
    4. CHAPTER 4. A SHORT SUMMARY OF INTELLECTUAL PROPERTY
    5. CHAPTER 5. REQUIREMENTS FOR PATENTABILITY
    6. CHAPTER 6. HOW DOES THE PATENT PROCESS WORK?
    7. CHAPTER 7. INFRINGEMENT AND FREEDOM TO OPERATE
    8. CHAPTER 8. BIOTECHNOLOGY, COMPUTER SOFTWARE AND BUSINESS METHODS PATENTS
    9. CHAPTER 9. WHO IS THE INVENTOR?
    10. CHAPTER 10. OWNERSHIP
    11. CHAPTER 11. TRANSLATING IDEAS INTO ECONOMIC REWARD
    12. CHAPTER 12. FOREIGN PATENTS
    13. CHAPTER 13. INNOVATION
    14. CHAPTER 14. CONCLUDING THOUGHTS
  23. Glossary
  24. Index