Essentials of Patents (Essentials Series): 22 - Softcover

Gibbs, Andy

Softcover

ISBN 10: 0471250503 ISBN 13: 9780471250500

Verlag: Wiley, 2003

Inhaltsangabe

While there are many books on "how to patent" and patent law, Essentials of Patents delivers practical advice on how to leverage patents as a powerful competitive corporate tool. This is not your "ordinary patent book". It's emphasis is directed to patent management with the express emphasis of increasing shareholder value, and it's audience, each with its own chapter, includes the CEO / ICO, CFO, CTO, and cross functional managers of HR, Engineering, Manufacturing and IT. Essentials of Patents is arguably one of the first works on intellectual property that drives home the importance of patent creation, protection and exploitation throughout the enterprise. Gibbs and DeMatteis show how patents can enhance competitive intelligence, product development cost reduction, product line expansion, and revenue streams, making this guide a must-have for the savvy manager. In it, the authors introduce a new management methodology: Patent Quality Management, or "PQM". With public company market values more than 90% attributable to the value of intangible assets and patents, the time has come for all corporate managers, not just R&D and legal counsel, to master intellectual property management in this competitive global market (and shareholders are demanding it).

Über diesen Titel

Über die Autorin bzw. den Autor

Andy Gibbs is President and CEO of PatentCafe.com, Inc. He is an inventor with 7 US and foreign patents (awarded and pending) for innovation in sports equipment, medical devices, automotive accessories, electronics & electrical connectors and merchandising aids. Gibbs is also an entrepreneur with more than 20 years experience in product--market development, strategic planning, and general business operations. He is a hands-on inventor/entrepreneur and an executive level strategist. Mr. Gibbs has provided intellectual property assessment, pre-investment analysis, operations and staffing analysis, litigation support and technical evaluations for venture capital firms, operating managers and independent inventors. The breadth of Mr. Gibbs' business experience includes front-line arbitration & litigation in Superior & Federal Courts; expert witness, and business Strategic Alliances or joint marketing development programs (Chrysler, Hertz, Isuzu, Samsonite, US Olympic Ski Team, others); Product Development Clients: ADAC Labs, DAEWOO Corp. (Korea), System Industries, National Semiconductor, Memorex, many others). Mr. Gibbs speaks internationally on intellectual property issues, has appeared on CNN/fn "Entrepreneurs Only" with Donald Van de Mark, has been interviewed on various business, invention and patent-related topics by Wired Magazine, Wall Street Journal, USA Today, the New York Times, San Jose Business Journal, Sacramento's Comstock's, and numerous other regional publications, and has appeared as guest speaker on San Francisco's KGO talk radio.

Sixteen years ago Bob DeMatteis had an idea he wanted to pursue. He pursued that idea, patented it, and today has 20 U.S. Patents and 7 pending. Bob owns 16 of those patents--all of which have been licensed and have made money. You can compare his track record to what is reported by the U.S. Patent Office―that only 3% of patents ever earn money for the inventor! Sales of Bob's inventions exceed $25 million a year and are used by national giants such as Sears, McDonald's, Walgreens, Kroger and Subway. You have most likely used some of Bob's innovations at one time or another, when you carry out merchandise in one of the stores’ printed plastic bags. Bob is one of the original developers of the plastic grocery sack, and is recognized as an innovative leader in the packaging industry. Bob's inventions and patents do not focus on engineering or scientific advances, but on making products "people friendly". His friendly, enthusiastic manner of training gets only rave reviews from participants. Bob is also the author of the bestseller book,From Patent to Profit, published by Penguin Putnam Press. Today, Bob is an internationally known inventor, author, in-demand speaker and a Certified Seminar Leader of the American Seminar Leaders Association. He is also a contributor and speaker on inventing and innovating at numerous colleges and universities plus the SBDC (Small Business Development Centers) and the U.S. Patent and Trademark Office and their many Depository Libraries.

Von der hinteren Coverseite

• Leverage patents as a powerful competitive business tool
• Employ powerful new patent strategies for marketing, R&D, and finance managers
• Exploit patents to slash product time-to-market and boost profits
• Implement the best intellectual property asset management (IPAM) software solutions

ESSENTIALS OF PATENTS

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 patents.

"Gibbs and DeMatteis give us a very up-to-date and clear entry point into patent management in the context of the real world of business, including insightful perspectives on finance, banking, taxes, and insurance. Both the generalist and specialist will benefit from learning how to deal with patents in a variety of established business systems."
—Steve Fox, Vice President and Deputy General Counsel for Intellectual Property, Hewlett-Packard Company

"At last, a quality reference text I can heartily recommend to my corporate clients and independent inventors alike. Gibbs and DeMatteis have drawn upon a wealth of experience in pulling together a remarkable book, deftly placing invention and the U.S. Patent System in a real-world business context."
—Don Kelly, CEO, Intellectual Asset Management Associates, LLC, former director, U.S. Patent and Trademark Office

"...compelling, 'how-to' manual for generating and fostering a sustainable patent-consciousness in all corporate employees, now a critical task in our knowledge-driven economy. The authors talk directly to each role and suggest what each individual must do to create, grow, and protect shareholder value through the development and exploitation of patents. This is a cornerstone book which will definitely impact business processes in corporate America."
—Lucy Teixeira Akers, Chairman, PIUG, Inc., The International Society for Patent Information, former IP Management Program Team Leader, ExxonMobil Chemical Co.

Aus dem Klappentext

• Leverage patents as a powerful competitive business tool
• Employ powerful new patent strategies for marketing, R&D, and finance managers
• Exploit patents to slash product time-to-market and boost profits
• Implement the best intellectual property asset management (IPAM) software solutions

ESSENTIALS OF PATENTS

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 patents.

Gibbs and DeMatteis give us a very up-to-date and clear entry point into patent management in the context of the real world of business, including insightful perspectives on finance, banking, taxes, and insurance. Both the generalist and specialist will benefit from learning how to deal with patents in a variety of established business systems.
--Steve Fox, Vice President and Deputy General Counsel for Intellectual Property, Hewlett-Packard Company

At last, a quality reference text I can heartily recommend to my corporate clients and independent inventors alike. Gibbs and DeMatteis have drawn upon a wealth of experience in pulling together a remarkable book, deftly placing invention and the U.S. Patent System in a real-world business context.
--Don Kelly, CEO, Intellectual Asset Management Associates, LLC, former director, U.S. Patent and Trademark Office

...compelling, 'how-to' manual for generating and fostering a sustainable patent-consciousness in all corporate employees, now a critical task in our knowledge-driven economy. The authors talk directly to each role and suggest what each individual must do to create, grow, and protect shareholder value through the development and exploitation of patents. This is a cornerstone book which will definitely impact business processes in corporate America.
--Lucy Teixeira Akers, Chairman, PIUG, Inc., The International Society for Patent Information, former IP Management Program Team Leader, ExxonMobil Chemical Co.

Auszug. © Genehmigter Nachdruck. Alle Rechte vorbehalten.

Essentials of Patents

By Andy Gibbs, Bob DeMatteis

John Wiley & Sons

Copyright © 2003 John Wiley & Sons, Ltd
All rights reserved.

ISBN: 978-0-471-25050-0

Excerpt

CHAPTER 1

Patents: High Stakes,High Value, High Liability

After reading this chapter you will be able to

• Understand what a patent is, what types of patents thereare, and how to protect them

• Learn how to file patent applications, including importantnew proposed 2003 Patent Office Rules

• Understand the value of patents to a corporation in termsof shareholder value, market positioning, and licensing revenues

America has a rich history of patents. The U.S. patent system wascreated in 1790 by an act of President George Washington. Hisintention was to spur innovation and industrial development in aburgeoning country. Little did he know that he was building the foundationfor America's future economic strength. America was destined tobecome the most dynamic, inventive country in the world. This verypatent system, established more than two centuries ago, is the foundationof our country's dynamic prosperity leading into the twenty-firstcentury.

Entire industries have been created based on the granting ofpatents. Edison, Westinghouse, Singer Sewing Machines, Levi Jeans, andGeneral Electric are only a fraction of those companies that came intoexistence based on the security of patent protection. Even today, thePullman brakes used in trains are the original units developed byWestinghouse more than 100 years ago. Chances are that your companyand its jobs can be directly linked back to the creation of new patentedproducts.

Today, new products and new high-performance variations on oldones are being invented. Yesterday's high-volume generic product linehas been splintered into many innovative niches. The best way to protectthese niches is with patent protection.

Because of their importance to commerce, patents today have morerespect than ever before. In the past 15 years, record judgments of $100million and more—a few approaching the $1 billion mark (PolaroidCorporation v. Eastman Kodak Company, 16 USPQ2d 1481, 1483 (1990);Polaroid awarded damages of $909,457,567.00)—have been awarded topatent holders as a result of patent infringement suits. In many emergingindustries and technologies, patent values have soared 20- to 50-fold injust the past several years. Much of the fluctuation in share value of thesecompanies is linked to the increase or decrease of these patent values.

Simply stated, developing and licensing new patented ideas can bea fast and economical way for companies to protect new productlaunches, gain new profits, and secure their future. If either you or yourcompany are part of the patent revolution in America, this can be goodnews for you.

Patent ownership also brings along with it a corresponding liability.There is an old saying that rings true: "Nobody wants a worthlesspatent, but everyone wants a piece of a valuable patent. "This means thatvaluable patents may be almost as much a liability as they are assets. Ifyour company's patents have particularly high value, chances are theywill ultimately wind up in the court system—either used offensivelyagainst alleged infringers or in a defensive campaign to prove their noveltyand validity.

Patents have become the driving force behind the computer industryand the Internet. Patents protect America's technological revolution,and they can secure our prosperity far into the future. In light of thenow infamous Enron meltdown, heated global competition, andchanges in world intellectual property policy, the changing businesslandscape is demanding an ever-higher level of responsibility by corporatemanagers in every functional department in the organization—aresponsibility to manage, develop, and exploit patents to the maximumbenefit of the shareholders.

Now it's time for you to learn about patents, the invention process, andhow to contribute to Patent Quality Management (PQM). Corporate oroutside legal or patent counsel will most likely handle patent legal workfor your company, so use this book to familiarize yourself with the terminology, processes, andsome of the intricacies of patents. Thus you willbe able to more effectively contribute to your company's objectives ofcreating valuable patents to protect the sales of new product releases andnew improvements.

What Is a Patent?

A patent is, in essence, a monopoly granted by the U.S. government toan inventor in exchange for full public disclosure of the invention.When a patent is granted to an inventor, it becomes a public documentthat fully discloses the details of the invention so that others skilled inthe technology can duplicate the results achieved by the patented invention; however, theinvention owner retains the sole right to exclude othersfrom making, selling, using, or importing the invention. This conceptwas so important to America's founding fathers that they made a provisiongranting rights to inventors in the U.S. Constitution:

The Congress shall have Power ... To promote the Progress ofScience and useful Arts, by securing for limited Times toAuthors and Inventors the exclusive Right to their respectiveWritings and Discoveries. (United States Constitution: Article1, Section 8)

Over the decades, the period for which the monopolistic right wasgranted to an inventor has varied. Today, it is for a period of 20 yearsfrom the date the application for patent is filed. At the end of the patentlife, the patent owner loses the monopolistic right and the invention fallsinto the public domain for anyone to make, sell, or import.

Many requirements must be met in order for an engineering developmentor technical discovery to be considered patentable, but the mostfundamental requirements are that the invention is (1) novel, (2) useful,and (3) not obvious to one skilled in the art.

This chapter provides a brief overview to the invention process, butwe wish to emphasize the business of invention—that strategic thinkingand tactical implementation used by a patent owner to properly exploitan invention for maximized profit and increased shareholder value.

Negative Rights

When a patent is granted by the U.S. government, it gives the inventorthe right to exclude others from manufacturing, using, offering for sale,or importing the invention into the United States. In other words,patent ownership does not give the owner the right to make, use, sell,or import the invention, but instead gives the invention owner the rightto exclude others from practicing these activities for the entire term ofthe patent.

Patents are sometimes referred to as a legal monopoly because theycan be used to prevent others from practicing the invention.

Types of Patents, Duration

There are three basic types of patents:

1. Utility patents may be granted to anyone who invents or discoversany new and useful process, machine, article of manufacture,system (or method of use), software and Internet methodologies,composition of matter, or any new, useful improvement thereof.

Utility patents are granted for the term, which begins on the dateof the grant and ends 20 years from the date the patent applicationwas first filed.

2. Design patents may be granted to anyone who invents a new, original,ornamental design for an article of manufacture. Designpatents are granted for a term of 14 years from the date of thegrant.

3. Plant patents may be granted to anyone who invents or discoversand asexually reproduces any distinct and new variety of plant.Plant patents are granted for the term, which begins on the dateof the grant and ends 20 years from the date the patent applicationwas first filed.

Forms of Utility Patent Protection

Most people think of patents in terms of a product, but utility patentprotection can take on many other forms. It is important that thoseindividuals, especially those on the PQM team, who have had little previouscontact with patents, know these various forms of protection. Aheightened awareness to the various forms of patents can help teammembers identify patenting opportunities, as well as improve the company'sability to protect its product line against infringement.

The language we use to describe the various forms of patent protectionis not based on statute, but are general terms used throughoutthe patent trade, whether that be an inventor, scientist, engineer, patentattorney, or patent examiner. Become familiar with these terms andyou and your company's inventive potential will be substantially broadened.

Product Patents

These patents are usually easy to identify because they refer to the physicalproduct itself. For instance, the lightbulb, the paper clip, and themousetrap are all fairly famous patents. Product patents may alsoencompass devices, apparatuses, or an entire group of associated products. Whena specific unique, novel, useful element is used with a product,that too defines the product as unique and would be considered aproduct patent. The terms device patent or apparatus patent are also commonlyused, but for ease of explanation, they are best grouped into thesingle category of product patents.

Method of Use or System Patents

These patents usually relate to making products people friendly. Theyshould be of particular interest to every company that sells products invirtually every facet of business. Unfortunately, many companies andtheir engineers are not familiar with this form of patent protection eventhough they may be creating superior methodologies and products.Systems patents can also reduce handling time and improve productivity.When you think about productivity, keep in mind the classic economicprinciple of "productivity produces income." From this perspective, systemspatents can be valuable assets to protect the sale of commercialproducts as well as consumer products. Simply put, systems patents referto two methodologies:

1. A method in which a product is used. For instance, scanning barcodes over laser reading devices. Or, self-opening plastic grocerysacks that automatically open on a dispensing rack when the previousbag is removed from the rack.

2. A method related to employees' business operations. For example, amethodology in which machine operators employ computerizedstatistical process controls to the operation of a piece of equipment.Or, even a method of new employee training that maximizesthe time investment.

Both applications save time. They can increase output, improve customersatisfaction, improve quality, increase profits, and so on. Developingsuperior systems can represent the central focus of a company's productline and result in an endless number of future opportunities as the company strives to make its product line 100 percent automatic and intuitivelypeople friendly. From this perspective, systems patents can be thesingle most important asset a company owns.

We know that patents may not be obtained on commonly usedproducts and components, but when they are used in a novel, useful, andunique method, patentability then becomes possible. One or all of thecomponents may be prior art as long as the outcome of the combineduse is novel and unique. Think in terms of efficiency, effectiveness, andconvenience for the end user, and you're thinking in terms of systemspatents.

If your PQM team starts thinking more in terms of systems patents,it will be improving the company's market position and giving the companya competitive edge. Ensuring that all departments understand theimportance and the impact of developing and patenting systems, notonly for the product line, but also internally within the department,should be a central focus of the PQM team in the twenty-first century.

Process Patents

Process patents generally refer to manufacturing processes. They wouldtypically improve productivity, reduce defects, or offer some value-addedquality. These patents are of primary importance to the manufacturingdepartment as well as the engineering department. One of the bestexamples of a process patent would be U.S. Patent No. 135,245,patented by Louis Pasteur of France, in 1873. It revealed the fundamentalsof the food sterilization process now known as pasteurization. It iseasy to understand the economic impact of such an important processpatent.

If the development of internal processes makes a product line sogeneric with such a narrow focus that it cannot be modified andimproved, it will continue to lose market share to those product linesthat are more adaptable to change and can satisfy emerging trends.

Process patents can also be a valuable tool to overcome anotheremerging danger. At times, companies maintain certain manufacturingprocesses as closely guarded trade secrets; however, if an outside entityfiles a patent application that covers that trade secret, the company canlose the rights to the trade secret. In other words, the company holdingthe trade secret would be forced to license its own manufacturingprocess from the new patent holder, regardless of how long the processhad been in prior use. There have been several court case precedents ofthis kind of action. The negative impact such a scenario could have onthe corporation, its management, and the shareholders could be disastrous.The best way to keep this from happening is by filing processpatents on your trade secrets before others do. Then you will be in theenviable position of licensing out to them instead.

A shift in focus to being a more customer-driven, innovationorientedcorporation must be accompanied by cost-effective manufacturingprocesses.

Improvement Patents

The term improvement patent may refer to any number of new incrementalimprovements made to an existing product, system, or process.This can be something as simple as a new tread design for a tire that displacesmore water than existing designs or as sophisticated as a methodto improve the optical magnification or resolution of the Hubbell SpaceTelescope.

Improvement patents can also be systems patents, just like the self-openinggrocery sack of the late 1980s was an improvement over theprior art "T-shirt bag" invented in 1966. Improvement patents can alsobe called product patents, if the improvement creates a new, improvedproduct that replaces a prior art product. In a way, it really does notmatter how you categorize an improvement patent; what is importantis whether your PQM Team takes action when these opportunitiesarise and you protect these company and shareholder assets withpatents.

A customer-oriented company should always be striving to innovatebased on customer needs. With total quality management (TQM),making incremental improvements in manufacturing processes of existingproducts leads to higher quality and improved output. With superiorquality, incremental changes in existing processes, systems, and productscan then be made to advance the company's profitability as it strives toimprove output, sales (via customer satisfaction), and quality. It is simplynot acceptable to be complacent with a present market position. If youdon't improve your products and processes, your competitors will. If youdon't protect them, your competitors will patent them out from underneathyou. Ask yourself: Who will be paying royalties to whom in orderto stay in business?

Machine Patents

When several elements are used in combination that have some sort ofproductive output, it is referred to as a machine patent. An example is themachine that rolls dough over a mandrel to form a bagel with a roundhole in the middle. Or, any number of high-speed bottling machinesused in the beverage industry.

Machine patents are usually generated by companies that are in themachinery manufacturing business. These patents often have accompanyingprocess patents. It is also common to include several of the individualinventive aspects of the machinery as part of the overall patentedmachine. Some people refer to machine patents as apparatus patents, thusfurther blurring the terminology used in the field.

Composition of Matter

Chemical composition patents are scientific by nature, such as thosegranted for various types of plastics. A burgeoning field of new compositionsis in the field of genetic and biological engineering. Compositionof matter is sometimes referred to as chemical compositions.If you are developing new patented compositions, you are probablya scientist working for any number of chemical- or medical-orientedcompanies or a major university.

Software Patents

This type of patent is more of a catchall term referring to any numberof computer- or Internet-related patents. It can include software itself,computer applications such as the one-touch screen, and Internet applicationsand methods, such as those used for secure credit card transactions.

(Continues...)

Excerpted from Essentials of Patents by Andy Gibbs. Copyright © 2003 by John Wiley & Sons, Ltd. Excerpted by permission of John Wiley & Sons.
All rights reserved. No part of this excerpt may be reproduced or reprinted without permission in writing from the publisher.
Excerpts are provided by Dial-A-Book Inc. solely for the personal use of visitors to this web site.

Details zur Ausgabe

• Verlag: Wiley
• Erscheinungsdatum: 2003
• Sprache: Englisch
• ISBN 10: 0471250503
• ISBN 13: 9780471250500
• Einband: Tapa blanda
• Anzahl der Seiten: 292
• Kontakt zum Hersteller: Nicht verfügbar
• Verantwortliche Person: Nicht verfügbar