1st Edition

Consider a Spherical Patent IP and Patenting in Technology Business

By Joseph E. Gortych Copyright 2014
    267 Pages 52 B/W Illustrations
    by CRC Press

    267 Pages
    by CRC Press

    Get Critical Insight into the Modern Patenting Scene

    We are now living in the "IP Era of the Information Age" where technology businesses are placing increasing emphasis on intellectual property (IP) as a way to add to their bottom lines. As a consequence, those working in a technology business or organization will inevitably be thrust into working with IP in one or more of its various forms. This increasing emphasis on IP matters requires technology workers to have at least a basic practical understanding of IP, particularly patents, so that they can effectively participate in their organizations’ IP and patenting efforts.

    Consider a Spherical Patent: IP and Patenting in Technology Business provides an unconventional and unvarnished examination of patents and the reality of how they are used and abused in technology business. The book starts with an overview of patents and how the patenting universe has become so complex, and warns of the danger of making "spherical," simplifying assumptions about patents and patent-related matters. It then takes a look at the cast of characters in the modern patenting world and the roles they play at the "IP Bazaar." The book goes on to explain the increasing emphasis in today’s modern IP world of leveraging patents in large collections of patents called "portfolios." The author describes how the fractal nature of innovation allows for the exponential growth of patents to densely pack an "IP space," including how this packing can exceed its normal limits and the adverse consequences. He also explores the evolution and importance of core to improvement to commercialization patents. A modern view of patents based on "quantum patent mechanics" explains some of the mysterious patent-related phenomena that are otherwise inexplicable using "classical patent mechanics."

    Using examples of actual patents and patent portfolios of real technology businesses, the author discusses how patenting strategies are defined based on "central organizing principles" behind why patents are being pursued. He describes the operational realities of running an internal patenting system as well as how to avoid the prevalent trap of accepting a high degree of disorder (entropy) in the business’s patenting system. He also takes a close look at other problematic areas, such as the use and abuse of provisional patent applications and how "no shame claims" can be issued by the patent office and the havoc they can create.

    Overview and Underview
    Simplification versus Oversimplification
    The Spherical Patent
    The Common Worker Drives Innovation
    The Adverse Impact of Überproductivity on Innovation
    The Evolution (and Devolution) of Patenting in Today’s Economy
    The IP Bazaar
    The Pervasive Nature of IP Interconnections and Interactions
    There Is No One-Size-Fits-All Patenting System
    References

    The IP Universe
    It’s More Complicated than You Think
    The IP Big Bang
    Business Entropy: The Disorganization of the Organization
    To Have Entropy or Not to Have Entropy
    Manifestations of Patenting System Entropy
    How Hard Can It Be?
    Logic Is Dangerous
    References

    Beyond the Spherical Patent
    Surface Features
    What Lies Beneath
    The Examiner Field of View
    The Self-Imposed Business Value Requirement

    Patent Portfolio Thermodynamics
    Patent Value
    Patent Portfolios
    The Classical Ideal Patent Gas
    The Megaexpense of Creating a Megaportfolio
    References

    Classical and Quantum Patent Mechanics
    Classical Patent Mechanics
    A Brief Classical Patent Mechanics View of the Patenting Process
    A Closer (But Still Brief) Look at the Patenting Process
    Quantum Mechanics Interlude
    Quantum Patent Mechanics and the Validity Uncertainty Principle
    To the USPTO, Aunt Betty and Intel Are Equal
    Measuring versus Filtering
    Let’s Parte!
    The Presumption of Validity
    If a Patent Issues in a Forest…
    Measuring Patent Validity
    What, Then, Does the Patent Office Measure?

    Provisional Patent Applications Revealed
    Introduction
    More Basic Information
    More about the Effective Filing Date
    The Spherical Provisional Patent Application
    Intervening Prior Art
    The Provisional-to-Nonprovisional Conversion Problem
    The New-Matter Problem
    Effective Filing Date and First to File
    The Scenario from Chapter 5 Revisited
    How Bad Provisional Patent Applications Happen to Good People
    It’s Not All Bad News

    The Double-Edged Sword of Infringeability and Validity
    Infringeability–Validity Balance
    The Infringeability–Validity Curves
    Claim Zones
    Fairness and the Infringeability–Validity Balance
    Claims for Pioneering Inventions
    Bureaucratic Quantum Tunneling
    Claim Distortion
    Claim Fuzziness
    Patent Quality

    Lost in IP Space
    The Exponential Growth of Patenting
    The Fractal Nature of Innovation
    Patenting in Dense IP Spaces
    The Classical Ideal IP Space
    IP Space Uncertainty
    IP Black Holes
    What about Us?
    Patent Waves and Technology Waves
    The Transition from Core to Commercialization Patents
    Know Thy IP Space
    Prior Art and Patent Application Preparation
    The Myth of Seeking the Broadest Claims Possible
    The Freedom to Operate

    Patent System Operational Reality
    Existential Reasons for Patenting
    Patenting outside Shangri-La
    How to Kill Innovation
    Status Quo Inertia
    Top-Down and Bottom-Up Change
    Business–Legal–Technical Balance
    The Canonical Patenting System
    Generation and Documentation
    No Innovator Left Behind
    Documenting Innovations Is Not Optional
    Document Everything
    The In-Sourcing and Outsourcing Options
    The IP Project Manager
    The Need for Parallel Processing
    A Deeper Look into the Innovation Review Process
    The Patent Application Review Process
    Types of Patent Claims
    Claim Construction
    Business Review of Patent Applications

    That’s Obviousness!
    The Requirement Filters Revisited
    The History of Obviousness
    Two Supreme Court Obviousness Decisions
    The KSR Case
    USPTO Examination Guidelines for Obviousness
    Obviousness Rejections
    The "Secondary Considerations" Wormhole
    Wormhole Limitations
    Invention Quenching
    The Obviousness/Nonobviousness Interface
    Fitting Patents into a Dense IP Space

    Inventions and Inventors
    Where and How Do Most Technology Workers Learn about IP?
    The IP Elephant in the Room
    IP Training and Education
    IP and Technology Worker Professionalism
    IP Zanshin
    Awards and Rewards
    The IP Performance Metric
    Changing the IP Culture
    Awards versus Rewards
    The Importance of Inventorship
    The General Rule of Inventorship
    Managing Expectations about Inventorship
    Inclusion Rather than Exclusion
    The Order of Inventors
    The Coefficient of Shame
    When Is an Innovation Patentable?
    Mentoring

    Independent Inventors
    Introduction
    The Conflict of Interest Problem
    The Lack of Money Problem
    The Enforcement Problem
    Chester Carlson
    Dr. Brian Caldwell, Independent Inventor
    Independent Inventor Riot Act

    Central Organizing Principles and Patent Strategies
    Calling the COPs
    The No-Patenting COP
    The Bottleneck IP COP
    The Commercialization COP
    New Products from an Old Technology
    Assertive Licensing
    The Cross-Licensing COP
    The One Product, One Patent COP
    Patenting Product Components

    Glossary of Useful Terms and Abbreviations

    Index

    Notes appear at the end of each chapter.

    Biography

    Joseph E. Gortych

    "This highly recommended, practical book presents the fields of IP and patenting in a clear and interesting manner. It is an essential guidebook for the novice. … Do not innovate without first reading this book."
    Optics & Photonics News, July 2014

    "This comprehensive book about the ins and outs of patents is very well written and puts together many examples."
    —Iain A. Neil, ScotOptix

    "This book provides specific how-to guidance and is very effective at instilling the importance of patenting in a cost-sensitive and time-sensitive manner to non-attorney inventors and managers. … The author has given us a practical and memorable guide to the patenting process."
    —Keith A. Roberson, Intellectual Property and Technology Counsel, 3D Systems Corporation

    "Extremely readable, the book explains both the big picture and the important details. It covers such issues as: provisional and non-provisional patent applications, effective filing dates, non-obviousness, enablement, infringement vs. validity, the different ways to write claims, and who does/does not qualify as an inventor. A must read for scientists, engineers, and inventors who need to protect their innovations."
    —Dr. Natale M. Ceglio, Chief Technology Officer, Media Lario Technologies, SRI

    "This book is a pleasure to read and provides a very complete course in intellectual property for technology patenting. I wish it had been published earlier, and I recommend it to everyone who seeks to understand how to navigate this process."
    —David Markle, Co-Founder, Periodic Structures Inc.