Patent Laws for Scientists and Engineers

268 Pages·2005·4.052 MB·English

by  Avery N. Goldstein

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PATENT LAW
for
SCIENTISTS
and
ENGINEERS
Copyright 2005 by Taylor & Francis Group, LLC
DK2550_title 1/10/05 10:52 AM Page 1
PATENT LAW
for
SCIENTISTS
and
ENGINEERS
edited by
Avery N. Goldstein
Boca Raton London New York Singapore
A CRC title, part of the Taylor & Francis imprint, a member of the
Taylor & Francis Group, the academic division of T&F Informa plc.
Copyright 2005 by Taylor & Francis Group, LLC
DK2550_Discl Page 1 Monday, February 7, 2005 2:47 PM
Published in 2005 by
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© 2005 by Taylor & Francis Group, LLC
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Preface
Technology is the watchword of our age. Corporations and universities
have responded to changes in the economic order by accelerating the pace
of technological development and commercialization. A successful com-
pany now must have superior technology and to justify research expend-
itures, theresulting intellectualpropertymustbe protectable.
The patent system represents a bargain between the inventor and soci-
ety: in exchange for teaching the public of an inventor’s discovery, society
gives the inventor a limited term monopoly to exclude others from prac-
ticingtheinvention. The tinkers andvisionaries oftheprevioustimes have
largely been replaced by a professional inventor class of scientists and
engineers who derive livelihoods by the solving of complex technological
problems. The solutions are brought to the benefit of the institution, and
ultimately society, only through the efforts of other professionals who take
an invention through the complex manufacturing, regulatory, and legal
facets of modern society.
The change in invention setting from the romantic notions of a sole
inventor toiling through the night to professional scientists and engineers
employedinaninstitutionalworkplacehasaffectednotonlythephilosophy
and nature of science but the responsibilities charged to the inventor.
A scientist or engineer practicing their craft now must be aware of how
patent rights are woven through the research process. A breakthrough
discovery without proper patent protection may never reach the public,
since investment in the discovery cannot be justified if there is not a time
of exclusivity to recoup the cost of investment capital. This work has been
assembled under the premise that patent rights are integral to the work of
the scientist and engineer and not an adjunct to the solution of technical
problems.
While many texts have been written to deliver an understanding of
intellectual property law to scientists and engineers, these works have
generally failed to provide an appropriate scope, which is neither too
expansive nor too detailed. Rather than attempt to give a mile-high view
of all types of intellectual property or, at the other extreme, to turn the
technical reader into a pseudo-patent attorney, this work is intended to
providethepracticingscientist,engineer,orstudentwiththeunderstanding
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of those aspects of patent law that are needed to best protect their inven-
tions.Thus,forthesecondaryformsofintellectualpropertyfromthestand-
pointofascientistorengineer,trademarkandcopyrightlaw,aswellasthe
mechanicsofpatentprosecution,thereaderisgenerallyreferredelsewhere.
An assumption is inherent in this volume that the reader will have the
benefit of interacting with an information specialist to search patent data-
bases,andapatentagentorattorneytodraftandprosecutepatentapplica-
tions. It is strongly recommended that an inventor seek out such patent
professionals to assure that a potential invention be afforded the greatest
opportunity to obtain the full protectionavailable underthe patentlaws of
various countries and multinational treaties. It is my intention that the
reader finds the following pages filled with information that can be imple-
mented into the daily research routine.
Whereverpractical,theissuesdiscussedinagivenchapterarefollowed
withfactpatternstoemphasizeactionsnecessarytoprotectthelatentpatent
rights thatmayexistinthesolutionofatechnicalproblem.Theillustration
of actual scenarios encountered by an engineer or scientist are intended to
highlightapracticalcourseofactiontobestprotectlatentpatentrightsthat
may well exist inan invention.
AveryN. Goldstein
Copyright 2005 by Taylor & Francis Group, LLC
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Editor
Avery N. Goldstein is a partner at the intellectual law firm of Gifford,
Krass, Groh, Sprinkle, Citkowski & Anderson, P.C. He isadmitted to prac-
ticebeforetheUnitedStatesPatentandTrademarkOffice,thecourtsofthe
StateofMichiganandthefederalcourts.Hispracticeisfocusedonbiotech-
nology, chemistry, and nanotechnology patent prosecution. A patent he
prosecuted was recently named as one of the 10 most important patents in
nanotechnologybyNanotechnologyLaw&Business.Hewastheeditorofthe
Handbook of Nanophase Materials (1997). He previously worked as a Senior
ResearchChemistinthechemicalindustry.Hehasauthoredover20papers
in the field and holds several patents in the area of nanotechnology. He
holds a Bachelor of Science degree in Chemistry, Bachelor of Science in
Biological Science, and a Juris Doctor degree from Wayne State University
and a doctorate degree in Chemistry from the University of California at
Berkeley. Heis married with two children.
Copyright 2005 by Taylor & Francis Group, LLC
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Contributors
Tom Brody RobertaJ. Morris
Registered Patent Agent Patent Attorney
CoudertBrothers L.L.P Ann Arbor, Michigan
San Francisco,California
Peter J. Newman
Angela M.Davison University of Alabamaat
Intellectual Property Counsel Birmingham
Ross Controls Birmingham Office of Grants and
Troy,Michigan Contracts Administration
(OGCA)
Ernest I.Gifford Birmingham, Alabama
Partner
Gifford, Krass, Groh,Sprinkle, Judith M. Riley
Anderson &Citkowski,P.C. Partner
Troy,Michigan Gifford,Krass, Groh, Sprinkle,
Anderson& Citkowski,P.C.
Avery N.Goldstein Troy, Michigan
Partner
Gifford, Krass, Groh,Sprinkle,
Anderson &Citkowski,P.C.
Troy,Michigan
Copyright 2005 by Taylor & Francis Group, LLC
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Contents
Part I: Introduction
Chapter 1 Anatomy of a patent
RobertaJ.Morris
Part II: Inventive activities
Chapter 2 Research records in the patent process
AveryN.Goldstein
Chapter 3 Inventor actions that can jeopardize patent rights
RobertaJ.Morris
Chapter 4 The invention disclosure document: recordingthe
essential facts of your invention
JudithM. Riley
Part III: Relationships
Chapter 5 Ownershipof intellectual property: employer rightsto
intellectual property
Ernest I. Gifford andAveryN. Goldstein
Chapter 6 Inventorship
Angela M.Davison
Chapter 7 Internet patent documentsearching andinteractions
with an information specialist
AveryN.Goldstein
Chapter 8 Interactions with a patent agent or attorney
Tom Brody
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Part IV: Ancillary patent activities
Chapter 9 How to read a patent
JudithM. Riley
Chapter 10 Technology transfer: patent licensing and
related Strategies
Peter J. Newman
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Part I
Introduction
Copyright 2005 by Taylor & Francis Group, LLC