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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
321 HavilandMondays 4:00-6:00
PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 2
Today’s Agenda – Introductions
• Introduction to the course• Course administration• Schedule• Some info about yourself• Introduction to Intellectual Property• Introduction to Patents
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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
PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 4
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
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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
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Course Books
REQUIRED OPTIONAL
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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
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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
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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 …
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PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 12
Web Site(s)http://cet.berkeley.edu/
Http://cs.berkeley.edu/~tlavian
bSpace
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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
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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
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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
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Some facts
• Microsoft assets: IP: 95% Working capital: 4% Fixed assets 1%Other: 1%
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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
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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 ….
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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