Consider a Spherical Patent : IP and Patenting in Technology Business book cover
1st Edition

Consider a Spherical Patent
IP and Patenting in Technology Business

ISBN 9781439888056
Published February 24, 2014 by CRC Press
267 Pages 52 B/W Illustrations

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Book Description

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.

Table of Contents

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

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

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

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
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?

Independent Inventors
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


Notes appear at the end of each chapter.

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"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.