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Patent Strategy for Researchers and Research Managers, 3rd Edition

Book Description

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

Table of Contents

  1. Cover
  2. Title Page
  3. Copyright
  4. Dedication
  5. Preface
  6. Preface to the Second Edition
  7. Preface to the First Edition
  8. About the Author
  9. Chapter 1: Basic Intellectual Property Concepts
    1. 1.1 Introduction
    2. 1.2 Basic Patent Law Concepts
    3. 1.3 Patent Office Operations
    4. 1.4 Requirements for Obtaining a Patent
    5. 1.5 Types of Patents
    6. 1.6 Parts of a Patent
    7. 1.7 The Term of a Patent
    8. 1.8 Provisional Protection
    9. 1.9 Definitions of Commonly Used Terms
    10. 1.10 International Treaties
    11. 1.11 The Paris Convention
    12. 1.12 The Patent Cooperation Treaty
    13. 1.13 The European Patent Convention
    14. 1.14 The African Intellectual Property Organization
    15. 1.16 Eurasian Patent Convention
    16. 1.17 Copyrights, Trademarks, and Trade Secrets
    17. 1.18 Other Resources
  10. Chapter 2: The Value of Patents
    1. 2.1 Exclusivity—The Desired Goal
    2. 2.2 The Mechanics of Achieving Exclusivity in a Technology Area
    3. 2.3 Traps and Misconceptions—What Patents Can'T Do
    4. 2.4 The Informational Value of Patents
    5. 2.5 Assigning Value to Patents
    6. 2.6 Licensing of Patents
  11. Chapter 3: Developing a Strategy
    1. 3.1 Professional Help
    2. 3.2 Determining Whether or Not an Invention is Patentable
    3. 3.3 Defining Strategy
    4. 3.4 The Principles Behind the Strategy—The Military Model
    5. 3.5 Developing a Patent Strategy Model
    6. 3.6 Developing a Patent Strategy for an Invention
    7. 3.7 Developing a Patent Strategy for a Series of Inventions
    8. 3.8 Developing a Strategy for an Existing Product
    9. 3.9 Developing a Strategy for Licensing Patents
    10. 3.10 Developing a Strategy for Handling a Potentially Adverse Patent
    11. 3.11 Developing a Strategy for Oddball Inventions
    12. 3.12 Dealing with Inventors When Patent Applications are Not Filed
    13. 3.13 Coordination of Other Strategies and Patent Strategy
  12. Chapter 4: Researching with Intellectual Property in Mind
    1. 4.1 Introduction
    2. 4.2 Characteristics of Prolific Inventors
    3. 4.3 Characteristics of Casual Inventors
    4. 4.4 The Inventive Process
    5. 4.5 Fostering Inventive Activity
    6. 4.6 Suggestions on How to Conduct Research for Stronger Patents
  13. Chapter 5: Infringement and Freedom to Operate
    1. 5.1 Types of Infringement
    2. 5.2 Avoiding Patent Infringement
    3. 5.3 DEALING WITH INFRINGERS
    4. 5.4 Research Disclosures and Journal Articles
    5. 5.5 Published Patent Applications and Provisional Patent Coverage
  14. Chapter 6: Working with Attorneys, Agents, and Patent Liaisons
    1. 6.1 Introduction
    2. 6.2 Preparing for the Legal World
    3. 6.3 Actions to Take Before Meeting with the Agent
    4. 6.4 Typical Working Arrangements with Agents
    5. 6.5 The Researcher's Responsibility for Technical Details
    6. 6.6 Aloofness
    7. 6.7 Experimentation for the Patent Application
    8. 6.8 Patent Liaisons and Other Intellectual Property Professionals
  15. Chapter 7: Disclosure and Filing Decisions
    1. 7.1 Introduction
    2. 7.2 Controlling the Disclosure of Technology
    3. 7.3 The Filing Decision
    4. 7.4 Filing Globally
    5. 7.5 Compulsory Licensing
    6. 7.6 The Cost of Broadly Filed Patent Applications
    7. 7.7 The Legal Systems of Individual Countries
    8. 7.8 Techniques for Determining which Countries Will be of Value
    9. 7.9 World Growth and Economic Power
    10. 7.10 Templates
    11. 7.11 Timing of Application Filings
    12. 7.12 Global Experts
    13. 7.13 Agreement with Strategy
  16. Chapter 8: After the Filing
    1. 8.1 Introduction
    2. 8.2 Anticipating the First Response from a Patent office
    3. 8.3 Modification of Claims
    4. 8.4 Research After the Filing
    5. 8.5 Maintaining Cohesion
    6. 8.6 Issuance and Maintenance of Patents
  17. Chapter 9: The Future of Intellectual Property Efforts
  18. References
  19. Further Reading
  20. Index