Fundamentals of Patenting and Licensing for Scientists and Engineers

Author: Matthew Y Ma
Publisher: World Scientific
ISBN: 9789814452557
Release Date: 2015-02-27
Genre: Business & Economics

This comprehensive book is the first of its kind to take scientists and engineers beyond simply getting a patent granted. Through the author's extensive technical background and experience in intellectual property licensing, it ties the many technical, legal and business aspects of patent enforcement to the innovation and patenting stage in the patent value chain, with the objective of helping inventors to create valuable patents that can be capitalized. In easy-to-understand language, this book covers various aspects, including basic concepts of patent laws and rules, innovation protection, patenting, patents post-granting and patent licensing. With over 40 tables, 70 figures, nearly 100 cases and examples, and a comprehensive index table, it serves as a practical handbook for inventors and patent practitioners. This second edition incorporates the latest changes in the America Invents Act (AIA), with additional case studies and illustrations throughout the book. For inventors who want to file patents by themselves, this new edition provides guidelines and step-by-step instructions on preparing and filing a US provisional patent application, while avoiding the pitfalls that commonly occur in do-it-yourself patenting. Contents:The Basics:The Basics of the Patent SystemWhat You Should Know about Patent LawHow to Read a PatentGetting Ready for Patenting:Innovation HarvestingProtecting Your Invention and Planning Your Patent FilingPreparing Your Patent ApplicationsPatent Prosecution and Post Granting:Patent ProsecutionTactics for Overcoming RejectionsPost Patent GrantingPatent Monetization:Patent Strategy for a Successful BusinessPatent Evaluation and Patent MaintenanceCommon Practices in Patent MonetizationPatent ValuationSkills:Patent SearchHow to File a U.S. Provisional Patent Application Readership: Researchers, scientists, engineers, individual inventors in innovation, entrepreneurship, business management, patent strategy and portfolio management, intellectual property professionals and engineering students in graduate studies. Keywords:Patent;Patent Law;Patent Filing;Patent LicensingKey Features:Written by a scientist in an easy-to-understand language and does not require prior knowledge of intellectual property lawHelps inventors create the most valuable patent by illustrating potential pitfalls in future licensing of technologiesReviews: "Matthew Ma has simplified convoluted legal concepts to plain and practical language. His book is incredibly useful and accessible to any scientist seeking to protect his innovations. I used Fundamentals of Patenting as a text reference for my engineering students at UC Berkeley." Tal Lavian, PhD College of Engineering University of California, Berkeley "This book shows the roadmap of patent commercialization. It provides all the basic concepts, essential tools, and deep knowledge from patent protection to licensing, and includes related savvy strategies, useful tactics, and valuable tips. Based on his broad experience in engineering, patent law, and business, Dr Ma brings a great educational material for our faculty and students, as well as a measurable impact to our research community." Jason Wen, PhD, MBA, CLP, RTTP Director, Technology Transfer and Licensing Boston College Reviews from the First Edition: “Matthew Ma has a deep understanding of the world of patents from the legal, technology, and business perspective. However, the brilliance of his book is the reduction of these complex concepts into easy to understand language. As the title would indicate, it is great for Scientists and Engineers, but also a must read for technology business leaders.” James Billmaier Founder Patent Navigation Inc. “This is an excellent and useful book meant to help both the beginners and experts, written in an easy-to-read style starting from the basics and going into technical depths. The author gives many practical tips based on his extensive experience in patenting and in working in R&D.” Prabir Bhattacharya, PhD IEEE Fellow; Professor and Canada Research Chair Concordia University, Montreal, Canada “… the clear, concise fashion in which Ma explains concepts that engineers — and even my law school students — may find difficult, such as dominant patents. Add this book to your library. In today's complex and commercial landscape, engineers and scientists who refuse to become patent savvy will likely be eclipsed by those who are.” IEEE Spectrum “It offers practical advice that will be appreciated by this community … I recommend the book as one of the few that offers the kind of practical advice that is often only gained through some years of experience.” Opinnovate “Against the backdrop of a complex commercial landscape, it is essential that engineers and scientists who are engaged in the business of innovation have a working knowledge of the legal rules, market forces, monetization mechanisms and IP risks that affect the value of their creations. This book will provide that knowledge.” International Journal of Microstructure and Materials Properties

Patent Fundamentals for Scientists and Engineers Third Edition

Author: Thomas T. Gordon
Publisher: CRC Press
ISBN: 9781466509443
Release Date: 2012-09-27
Genre: Law

The most significant overhaul of the U.S. patent laws in decades occurred with the recent passage of the Leahy-Smith America Invents Act (AIA). Understanding the law that dictates what a patent is and how a patent is obtained and enforced, and the recent changes through statute or case law litigation presents unique challenges. This third edition of Patent Fundamentals for Scientists and Engineers examines the new Act and provides an overview of the patent system for the independent inventor as well as for members of the scientific and business community—whether a scientist, engineer, supervisor, or manager. In addition to a new chapter dedicated to the America Invents Act, the third edition includes annotations of the recent law changes, updates in all chapters, new figures, and new case studies. The authors discuss patent filing outside of the United States and also dedicate a chapter specifically to the Canadian patent system. They describe the key topics that anyone involved in the patent process needs to know, including what makes an invention patentable, the art of patent searching, and the crucial role of record keeping. The text also includes an indispensable glossary of patent terminology, as well as an appendix with sample U.S. Patent and Trademark Office (USPTO) forms. This book provides a valuable guide to assist inventors in dealing with the USPTO, as well as with patent professionals. The text describes the patent process from conception to application filing and is a must-have reference for scientists and businesspeople alike. Since the role of patent professionals is to obtain the maximum protection for inventors, both the inventor and businessperson would be well advised to understand and participate in all the steps involved. This book offers an excellent insight into the patent process.

Walford s Guide to Reference Material Science and technology

Author: Albert John Walford
Publisher: Library Assn Pub Limited
ISBN: 185604341X
Release Date: 1999
Genre: Reference

A core resource for the identification and evaluation of reference materials, cited in BCL3 and Sheehy. While the majority of items are books, periodical articles, microforms, and online and CD-ROM sources are also represented. This revised and updated volume includes many 1998 publications as possible, together with some items published early in 1999. Some 700 items have been added, bringing the total to 7,594. No schedule is given for publication of volumes 2 and 3, but presumably the complete project will follow three-year cycle established with previous editions.

How to Write a Patent Application

Author: Jeffrey G. Sheldon
ISBN: 1402425600
Release Date: 2015-12-07
Genre: Law

Stocked with drafting checklists and sample drafting language, documents and drawings, the second edition of How to Write a Patent Application walks you step-by-step through the entire process of preparing patent applications. This hands-on resource helps you: Get from an inventor all the information needed to prepare an effective application Claim an invention with sufficient breadth Claim an invention so that the elements that render the invention nonobvious are clearly set forth in the claims Claim an invention whose validity will be sustained by the courts Avoid damaging drafting mistakes such as faulty transitions, inconsistent terminology, incorrect verb forms, and deficient functional language Completely up-to-date, How to Write a Patent Application analyzes developments under the America Invents Act, the latest USPTO initiatives, and key decisions of the federal courts, and provides the author s practical suggestions and commentary."

Patent Licensing and Selling

Author: Mark S. Holmes
Publisher: Practising Law Inst
ISBN: 1402420641
Release Date: 2014-06-07
Genre: Law

Now in the Second Edition, Patent Licensing and Selling: Strategy • Negotiation • Forms has been completely updated and significantly expanded to include additional strategies for successfully monetizing a patent portfolio. Featuring hundreds of sample licensing clauses and provisions, Patent Licensing and Selling, Second Edition shows you how to draft fair and litigation-free patent license and patent purchase agreements that serve your clients' interests, satisfy other parties, and shield clients from legal exposure.The author helps you:•Avoid terms that trigger delays and disputes•Grant exclusive patent licenses and successfully buy or sell a patent portfolio•Retain the right to choose which markets to enter first•Swiftly bring licensed or purchased products to market•Protect against infringement of licensed or purchased patents•Set license duration and termination guidelines•Maintain the confidentiality of agreementsIt also provides direction on such other mandatory topics in a patent purchase agreement as:•Representations and warranties of both the buyer and the seller, including authority to sell, title to the patents, the validity and enforceability of the patents, any pre-existing licenses or other obligations affecting the patents, and notice of any other legal proceeding that might affect rights to the patents•Purchase price and payment requirements•Taxes•Closing requirementsIn addition Patent Licensing and Selling, Second Edition includes a complete discussion of the recently decided U.S. Supreme Court case, Bowman v. Monsanto, which held that patent exhaustion does not permit a farmer to reproduce patent­ed seeds through planting and harvesting without the patent holder's permission. Updated at least once a year, Patent Licensing and Selling: Strategy • Negotiation • Forms is a vital handbook for patent practitioners and other intellectual property attorneys, corporate counsel, corporate executives, patent officials, and inventors.

Patents Copyrights and Trademarks For Dummies

Author: Henri J. A. Charmasson
Publisher: John Wiley & Sons
ISBN: 9780470507704
Release Date: 2009-03-03
Genre: Law

Useful tips and step-by-step guidance from filing to issue to license Acquire and protect your share of this major business asset Want to secure and exploit the intellectual property rights due you or your company? This easy-to-follow guide shows you how — helping you to evaluate your idea's commercial potential, conduct patent and trademark searches, document the invention process, license your IP rights, and comply with international laws. Plus, you get detailed examples of each patent application type! Discover how to: Avoid application blunders Register trademarks and copyrights Meet patent requirements Navigate complex legal issues Protect your rights abroad The entire body of U.S. patent laws Example office actions and amendments Sample forms Trademark registration certificates Application worksheets See the CD appendix for details and complete system requirements. Note: CD-ROM/DVD and other supplementary materials are not included as part of eBook file.

Intellectual Property Law for Engineers and Scientists

Author: Howard B. Rockman
Publisher: John Wiley & Sons
ISBN: 0471697397
Release Date: 2004-07-26
Genre: Law

An excellent text for clients to read before meeting with attorneys so they'll understand the fundamentals of patent, copyright, trade secret, trademark, mask work, and unfair competition laws. This is not a "do-it-yourself" manual but rather a ready reference tool for inventors or creators that will generate maximum efficiencies in obtaining, preserving and enforcing their intellectual property rights. It explains why they need to secure the services of IPR attorneys. Coverage includes employment contracts, including the ability of engineers to take confidential and secret knowledge to a new job, shop rights and information to help an entrepreneur establish a non-conflicting enterprise when leaving their prior employment. Sample forms of contracts, contract clauses, and points to consider before signing employment agreements are included. Coverage of copyright, software protection, and the Digital Millennium Copyright Act (DMCA) as well as the procedural variances in international intellectual property laws and procedures.

Valuation and Dealmaking of Technology Based Intellectual Property

Author: Richard Razgaitis
Publisher: John Wiley & Sons
ISBN: 9780470502860
Release Date: 2009-07-28
Genre: Law

This indispensable tool provides readers with complete coverage of the issues, methods, and art of valuing and pricing of early-stage technologies including backgrounds in the core concepts, sources of value, methods of valuation, equity realizations, and negotiation strategies.

Essentials of Intellectual Property

Author: Alexander I. Poltorak
Publisher: John Wiley & Sons
ISBN: 9780471273295
Release Date: 2002-10-24
Genre: Law

ESSENTIALS OF INTELLECTUAL PROPERTY Full of valuable tips, techniques, illustrative real-world examples, exhibits, and best practices, this handy and concise paperback will help you stay up to date on the newest thinking, strategies, developments, and technologies in intellectual property. "Alexander Poltorak and Paul Lerner have written the definitive primer on intellectual property for business professionals. Thorough in its coverage and understandable in its delivery, Essentials of Intellectual Property provides not only an outstanding summary of intellectual property basics, but a useful and sensible strategy for using intellectual property to the best needs of a business. Poltorak and Lerner have combined their in-depth knowledge of patent law with their savvy business skills to yield an indispensable reference for the business professional." —Jeffrey L. Brandt, Patent Attorney, Former Senior Vice President and Intellectual Property & Licensing Counsel, "Alex Poltorak and Paul Lerner have pulled off a mighty feat with Essentials of Intellectual Property. They have crafted a work that is clear for the beginning practitioner while nuanced and sophisticated for the savvy tech transfer and IP management veteran. Lively and often witty writing is a treat not often found in tomes on what can be a dry subject. With Essentials of Intellectual Property, the practitioner has a new literary tool for tying IP strategy to the business reality of tomorrow." —Edward Kahn, Founder and President, EKMS, Inc., Cambridge, MA "This critically important new volume of work not only provides the professional with a greater knowledge of this vast subject, but also the novice with a better understanding and appreciation for the results of their creative abilities." —Lawrence J. Udell, Executive Director, California Invention Center, Professor of New Ventures and Entrepreneurship The Wiley Essentials Series—because the business world is always changing...and so should you.


Author: Richard K. Gardner
ISBN: UOM:49015003053486
Release Date: 1976
Genre: Best books