Patent Strategy for Researchers and Research Managers 3rd Edition by Jackson Knight 0470057750 9780470057759

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ISBN 10: 0470057750

ISBN 13: 9780470057759

Author: H. Jackson Knight

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

Patent Strategy for Researchers and Research Managers 3rd Table of contents:

Chapter 1 Basic Intellectual Property Concepts

1.1 Introduction

1.2 Basic Patent Law Concepts

1.3 Patent Office Operations

1.4 Requirements for Obtaining a Patent

Other Requirements

1.5 Types of Patents

Utility Patents

Utility Model Patents

Design Patents

Plant Patents

1.6 Parts of a Patent

1.7 The Term of a Patent

1.8 Provisional Protection

1.9 Definitions of Commonly Used Terms

Prior Art

Priority Date

Filing Date

Prosecution

Office Action

Rejection

Objection

Amendment

Final Rejection

Patent Pending

Publication

Laid-open

Opposition Proceedings and Post-Grant Reviews

Ex Parte Reexamination

Inter Partes Reexamination/Review

Post-Grant Review

Appeal

Infringement

Prior User Rights

1.10 International Treaties

1.11 The Paris Convention

1.12 The Patent Cooperation Treaty

1.13 The European Patent Convention

1.14 The African Intellectual Property Organization

1.15 The African Regional Intellectual Property Organization

1.16 Eurasian Patent Convention

1.17 Copyrights, Trademarks, and Trade Secrets

Copyrights

Trademarks

Trade Secrets

1.18 Other Resources

Chapter 2 The Value of Patents

2.1 Exclusivity-The Desired Goal

2.2 The Mechanics of Achieving Exclusivity in a Technology Area

2.3 Traps and Misconceptions-What Patents Can’t Do

The ‘Value’ Trap

The ‘Protection’ Trap

The ‘Patent at All Costs’ Trap

The ‘Uniform Treatment’ Misconception

The ‘Idea’ Misconception

2.4 The Informational Value of Patents

Technical Information

Competitive Information

2.5 Assigning Value to Patents

2.6 Licensing of Patents

Chapter 3 Developing a Strategy

3.1 Professional Help

3.2 Determining Whether or Not an Invention is Patentable

3.3 Defining Strategy

3.4 The Principles Behind the Strategy-The Military Model

3.5 Developing a Patent Strategy Model

Extent of Patent Coverage Desired (Objective)

Method of Acquiring Intellectual Property (Offensive)

Identifying Competitive Advantage (Simplicity)

How Will Decisions be Made? (Unity of Command)

The Focus of Efforts (Mass)

Response to Competitive Patents (Economy of Force)

Maintaining Up to Date (Maneuver)

Coordination of Filings (Surprise)

Protection of Unprotected Property (Security)

Changing the Strategy

3.6 Developing a Patent Strategy for an Invention

What?

When?

Who?

How?

Where?

Constructing the Strategy

3.7 Developing a Patent Strategy for a Series of Inventions

What?

Where?

When?

How?

3.8 Developing a Strategy for an Existing Product

What is the Current Situation?

What is the Vision?

What are the Existing Competitive Advantages?

What are the Existing Market Needs that Could be Met by a Determined Competitor?

What are the Major End-Use Trends and Thrusts?

3.9 Developing a Strategy for Licensing Patents

Licensing Patents to Other Companies

Licensing Patents From Other Companies

3.10 Developing a Strategy for Handling a Potentially Adverse Patent

Determining the Status of the Publication

Determining What is Claimed

Determining Whether it is a Shield or a Sword, or Neither

Developing a Strategy for Taking Action

3.11 Developing a Strategy for Oddball Inventions

3.12 Dealing with Inventors When Patent Applications are Not Filed

3.13 Coordination of Other Strategies and Patent Strategy

Chapter 4 Researching with Intellectual Property in Mind

4.1 Introduction

4.2 Characteristics of Prolific Inventors

Synthesizing Concepts

Getting Ideas

How Prolific Inventors Invent

4.3 Characteristics of Casual Inventors

4.4 The Inventive Process

Defining Invention and Discovery

Two Types of Invention Processes

The Role of Serendipity

4.5 Fostering Inventive Activity

The Creative Needs of Inventors

Organization and Freedom

Systems Development

Encouragement and Acceptance of Failure

Acceptance of Personality and Skills

Expecting Inventions

4.6 Suggestions on How to Conduct Research for Stronger Patents

Know the Technology Area

Critical Operating Ranges

Documentation

Chapter 5 Infringement and Freedom to Operate

5.1 Types of Infringement

5.2 Avoiding Patent Infringement

Freedom-to-Operate Searches

Interpreting Potentially Adverse Patents

Dealing with Adverse Patents

5.3 Dealing with Infringers

5.4 Research Disclosures and Journal Articles

5.5 Published Patent Applications and Provisional Patent Coverage

Chapter 6 Working with Attorneys, Agents, and Patent Liaisons

6.1 Introduction

6.2 Preparing for the Legal World

6.3 Actions to Take before Meeting with the Agent

6.4 Typical Working Arrangements with Agents

6.5 The Researcher’s Responsibility for Technical Details

6.6 Aloofness

6.7 Experimentation for the Patent Application

6.8 Patent Liaisons and Other Intellectual Property Professionals

Chapter 7 Disclosure and Filing Decisions

7.1 Introduction

7.2 Controlling the Disclosure of Technology

7.3 The Filing Decision

7.4 Filing Globally

7.5 Compulsory Licensing

7.6 The Cost of Broadly Filed Patent Applications

7.7 The Legal Systems of Individual Countries

7.8 Techniques for Determining Which Countries will be of Value

7.9 World Growth and Economic Power

7.10 Templates

7.11 Timing of Application Filings

7.12 Global Experts

7.13 Agreement with Strategy

Chapter 8 After the Filing

8.1 Introduction

8.2 Anticipating the First Response from a Patent office

8.3 Modification of Claims

8.4 Research After the Filing

8.5 Maintaining Cohesion

8.6 Issuance and Maintenance of Patents

Chapter 9 The Future of Intellectual Property Efforts

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