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

Consider a Spherical Patent

IP and Patenting in Technology Business, 1st Edition

By Joseph E. Gortych

CRC Press

267 pages | 52 B/W Illus.

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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.


"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.

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.

About the Originator

Subject Categories

BISAC Subject Codes/Headings:
BUSINESS & ECONOMICS / Management Science
TECHNOLOGY & ENGINEERING / Engineering (General)