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Patent Strategy: For Researchers and Research Managers, 3rd Edition


CAD $119.75

Patent Strategy: For Researchers and Research Managers, 3rd Edition

H. Jackson Knight

ISBN: 978-0-470-05774-2 February 2013 256 Pages

CAD $48.99
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CAD $119.75
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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. 

Comprehensive revisions within this 3rd edition include the major features and new strategic considerations brought about by the passage in the United States of the America Invents Act. This significant patent law change replaces the prior US system, which granted a patent to the person who could prove he was the "first-to-invent' the claimed invention, with a new system that grants the patent to the first inventor to file for the claimed invention in the patent office. This and other considerations of the Act, such as the new post-grant review, will have a major effect on the acquisition of patents in the United States. In addition, the book expands and updates the foundation of patent information that global inventors have found so valuable in earlier editions.

This new advice will enable all researchers to file the best possible patents and maintain a good portfolio.

Reviews from the 2nd edition:

"this is one of the few books to get into the nuts and bolts of what best patent practices actually are. The explanation is clear, and addressed to non-lawyers. A major benefit is that it has a very global view, discussing patent regimes of several major countries, not just the US. In my experience, most tech companies are very naive about such matters."

Internet Patent News
"...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..."

Journal of Chemical Technology and Biotechnology
"This handy book provides the researcher with useful guidance on how to maximize the benefit of their inventiveness to themselves and their organization".

Preface xi

Preface to the Second Edition xv

Preface to the First Edition xix

About the Author xxiii

1 Basic Intellectual Property Concepts 1

1.1 Introduction 1

1.2 Basic Patent Law Concepts 2

1.3 Patent Office Operations 5

1.4 Requirements for Obtaining a Patent 8

1.5 Types of Patents 11

1.6 Parts of a Patent 14

1.7 The Term of a Patent 20

1.8 Provisional Protection 22

1.9 Definitions of Commonly Used Terms 24

1.10 International Treaties 32

1.11 The Paris Convention 32

1.12 The Patent Cooperation Treaty 35

1.13 The European Patent Convention 40

1.14 The African Intellectual Property Organization 42

1.15 The African Regional Intellectual Property Organization 42

1.16 Eurasian Patent Convention 43

1.17 Copyrights, Trademarks, and Trade Secrets 45

1.18 Other Resources 48

2 The Value of Patents 49

2.1 Exclusivity – The Desired Goal 49

2.2 The Mechanics of Achieving Exclusivity in a Technology Area 56

2.3 Traps and Misconceptions – What Patents Can’t Do 62

2.4 The Informational Value of Patents 65

2.5 Assigning Value to Patents 68

2.6 Licensing of Patents 72

3 Developing a Strategy 75

3.1 Professional Help 75

3.2 Determining Whether or Not an Invention is Patentable 77

3.3 Defining Strategy 79

3.4 The Principles Behind the Strategy – The Military Model 81

3.5 Developing a Patent Strategy Model 82

3.6 Developing a Patent Strategy for an Invention 96

3.7 Developing a Patent Strategy for a Series of Inventions 110

3.8 Developing a Strategy for an Existing Product 118

3.9 Developing a Strategy for Licensing Patents 121

3.10 Developing a Strategy for Handling a Potentially Adverse Patent 123

3.11 Developing a Strategy for Oddball Inventions 127

3.12 Dealing with Inventors When Patent Applications are Not Filed 129

3.13 Coordination of Other Strategies and Patent Strategy 131

4 Researching with Intellectual Property in Mind 133

4.1 Introduction 133

4.2 Characteristics of Prolific Inventors 134

4.3 Characteristics of Casual Inventors 140

4.4 The Inventive Process 142

4.5 Fostering Inventive Activity 146

4.6 Suggestions on How to Conduct Research for Stronger Patents 150

5 Infringement and Freedom to Operate 155

5.1 Types of Infringement 155

5.2 Avoiding Patent Infringement 158

5.3 Dealing with Infringers 161

5.4 Research Disclosures and Journal Articles 162

5.5 Published Patent Applications and Provisional Patent Coverage 165

6 Working with Attorneys, Agents, and Patent Liaisons 167

6.1 Introduction 167

6.2 Preparing for the Legal World 168

6.3 Actions to Take before Meeting with the Agent 170

6.4 Typical Working Arrangements with Agents 171

6.5 The Researcher’s Responsibility for Technical Details 173

6.6 Aloofness 174

6.7 Experimentation for the Patent Application 176

6.8 Patent Liaisons and Other Intellectual Property Professionals 177

7 Disclosure and Filing Decisions 181

7.1 Introduction 181

7.2 Controlling the Disclosure of Technology 182

7.3 The Filing Decision 183

7.4 Filing Globally 185

7.5 Compulsory Licensing 187

7.6 The Cost of Broadly Filed Patent Applications 188

7.7 The Legal Systems of Individual Countries 190

7.8 Techniques for Determining Which Countries will be of Value 191

7.9 World Growth and Economic Power 193

7.10 Templates 195

7.11 Timing of Application Filings 195

7.12 Global Experts 197

7.13 Agreement with Strategy 197

8 After the Filing 199

8.1 Introduction 199

8.2 Anticipating the First Response from a Patent office 199

8.3 Modification of Claims 200

8.4 Research After the Filing 202

8.5 Maintaining Cohesion 204

8.6 Issuance and Maintenance of Patents 205

9 The Future of Intellectual Property Efforts 207

References 211

Further Reading 215

Index 219

“With minimal use of ‘legal jargon’ this book provides researchers with the assistance and advice they require to understand the legal complexities that they may encounter before and during a patent application.”  (Platinum Metals Review, 1 May 2013)

“While there is no substitute for experience, this book is possibly the next best thing.”  (Chemistry & Industry, 1 April 2013)