PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Week 1

PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 1

Patent EngineeringIEOR 190G

CET: Center for Entrepreneurship &Technology

Week 1

Dr. Tal Lavian(408) 209-9112

[email protected]

321 HavilandMondays 4:00-6:00


Today’s Agenda – Introductions

• Introduction to the course• Course administration• Schedule• Some info about yourself• Introduction to Intellectual Property• Introduction to Patents


Patent Engineering Course • This is an engineering class not a law class• The course broadly covers patents as a

business tool • The use of intellectual capital for competitive

advantage • Protection and commercialization of engineering

and scientific intellectual assets • Examination of several patent litigation case

studies• focus on invention, innovation, patent and strategy


What will we do in this course?

• Mondays 4:00pm - 6:00pm• Please be on time

• Patent – innovations, engineering, and strategy • Industry lectures • Few external presentations• Students as “experts witnesses” • Field trip – court visit SF or Oakland


What Will We Cover?

• Overview of the Patent System• Publication, Public Use, and On-Sale

Limitations• Enablement and Best Mode Requirements • Utility, Provisional, and PCT Application • Novelty and Unobviousness Requirements • Avoiding Patent Infringement• Patentability and Infringement Comparison• Strategies for Engineers who are Witnesses

or Experts in Patent Lawsuits


Course Books

REQUIRED OPTIONAL


Invited Lectures

•


Students Presentations

• Students’ presentations• Topics on patent engineering in litigated

cases

• Some examples from last year: http://www.cs.berkeley.edu/~tlavian/spring2009/patentEngineering.html

http://www.cs.berkeley.edu/~tlavian/spring2009/patentEngineering.html


Students Presentations

• Present in 10-15 min a patent litigation case

• Case summary• Parties, dates, history, issue in dispute, results

• Engineering aspects of the dispute• The patent(s), technology, product• Engineering aspects of the infringement • The engineering view vs. the legal view

• Any proposed design around ?

Volunteers to start next week


Grading - Attendance

• 2 units credit course• You will be fine - • Pass/Fail (it would be very hard to fail)

• Passing grade – requires attendance at all lectures (with one allowed unavoidable absence)

• Sign in for the class • Patent blogs and mailing lists • Students presentations – 15 min• Prior Art search

Beijing

• Teaching class in Tsinghua University via UCB CET (March 29th, April 5th)

• Need to reschedule those classes• Suggestions …



Web Site(s)http://cet.berkeley.edu/

Http://cs.berkeley.edu/~tlavian

bSpace

http://cet.berkeley.edu/

http://cs.berkeley.edu/~tlavian


Who are you?

• Tell us about yourself:• In about 60 seconds• Your name, education, experience• Goals for future • What should we know about you• Your patent, invention background experience

• What do you know about patents?• How many patents have you read?

• Why are you here?• What you would like to accomplish?

• Send me email with this info


Innovation: long-term health

You need a healthy root system for the tree to flourish!

Innovation!

Patents

Software

Ideas

Knowledge

Work Processes

Creativity

Skills

Trade Secrets

Inventions

Secret sauce

Concepts


Patents as a Critical Business Tool

• Good patents are the cornerstone of almost any technology business

• Patent protection can provide significant incentive and motivation for further research expenditures

• An understanding of patents is critical for the successful commercialization of most technologies


Some facts

• Microsoft assets: IP: 95% Working capital: 4% Fixed assets 1%Other: 1%


Patent History• Created by Congress in 1790

– “…to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

• Article 1, Section 8• July 31, 1790 – 1st Patent

– Samuel Hopkins patents potash– Cost : $4.00

• Reviewed by Cabinet Members– Thomas Jefferson – Secretary of State– Henry Knox – Secretary of War– Edmund Randolph – Attorney General– George Washington – President

www.uspto.gov, www.ipo.org


More Patent History

• 3 Patents Awarded in 1790– First patent law enacted

• 1802 – US Patent and Trademark Office Created– Responsibility of granting patents/registering

trademarks

• Atomic Energy Act of 1954– Excludes nuclear purposes/atomic weapons

• American Inventors Protection Act (1999)– Most recent revision of patent laws

• New Legislation debate – 2008-2009 ….


US Constitution

• Rights are derived directly from US constitution, Article 1, section 8– granting congress the power to promote the

progress of science and useful arts by securing for a limited time to authors and inventors the exclusive rights to their respective writings and discoveries

PatentEng-Berkeley-Lavian 20

The Golden Age of Patents

• Presumption of validity strong

• Large verdicts / settlements abound

• Federal Circuit is unpredictable

• Threat of injection is real

Week 1: Introduction to Patent Engineering

Documents

PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Week 1