The most significant overhaul of the U.S. patent laws in decades occurred with the recent passage of the Leahy-Smith America Invents Act (AIA). Understanding the law that dictates what a patent is and how a patent is obtained and enforced, and the recent changes through statute or case law litigation presents unique challenges. This third edition of Patent Fundamentals for Scientists and Engineers examines the new Act and provides an overview of the patent system for the independent inventor as well as for members of the scientific and business community—whether a scientist, engineer, supervisor, or manager.
In addition to a new chapter dedicated to the America Invents Act, the third edition includes annotations of the recent law changes, updates in all chapters, new figures, and new case studies. The authors discuss patent filing outside of the United States and also dedicate a chapter specifically to the Canadian patent system. They describe the key topics that anyone involved in the patent process needs to know, including what makes an invention patentable, the art of patent searching, and the crucial role of record keeping. The text also includes an indispensable glossary of patent terminology, as well as an appendix with sample U.S. Patent and Trademark Office (USPTO) forms.
This book provides a valuable guide to assist inventors in dealing with the USPTO, as well as with patent professionals. The text describes the patent process from conception to application filing and is a must-have reference for scientists and businesspeople alike. Since the role of patent professionals is to obtain the maximum protection for inventors, both the inventor and businessperson would be well advised to understand and participate in all the steps involved. This book offers an excellent insight into the patent process.
Table of Contents
Patents as intellectual property
Case study: Patents show birth of the electronic age
What a patent is
What a patent is not
USPTO administrative structure
USPTO administrative function
U.S. courts’ role
Filing of U.S. patents
The Canadian patent system
Canadian law distinctions
Case study: Higher life-forms
General facts about the Canadian Intellectual Property Office (CIPO)
Case study: Patenting of a living organism
Criteria for a patent
Case study: Obviousness
Case study: Serendipitous inventions
Types of patents
Stage 1: From conception to patent application
Case study: Publication—§102 (b) one year bar
Stage 2: The patent application
Stage 3: The prosecution
Trade secret approach
Defensive publication approach
An important factor: Cost
Case study: The Einstein-Szilard refrigerator (patent benchmark)
Patent searching in the 21st century
Searching a computer database
Enforcement of patent rights
Importance of record keeping
Patents around the world
Subject matter that can be patented in other countries
Time for filing patent applications in other countries
Procedures for filing patent applications in other countries
Additional PCT options
Additional EPC options
Examples of typical scenarios for extensive foreign filing
Harmonization of patent laws
America invents act
Immediate provisions of the Leahy-Smith America Invents Act
Provisions effective 10 days after enactment
Provisions effective 1 year after enactment
Provisions effective 18 months after enactment
USPTO practice changes
Glossary: Words and phrases used in patent terminology
Thomas T. Gordon [deceased] worked as a chemist in the pharmaceutical and polymer industries before earning a JD from St. Louis University. Mr. Gordon had over 40 years’ experience in the patent field, working in various areas of patent preparation, searching, and prosecution. He conducted patent licensing programs in the United States and Europe and worked for major industrial corporations. He finished his career in private patent practice in the Arlington, Virginia area.
Arthur S. Cookfairis a patent agent with more than 45 years’ experience in patent law in both corporate and private practice. He has served as a patent examiner in the U.S. Patent and Trademark Office and is the author of numerous publications on patents and inventions. Based on his undergraduate work in chemistry and geoscience and graduate work in science and education, Dr. Cookfair has had a varied career as a chemist, educator, and patent practitioner. He has lectured and taught extensively on science and patent law in this country and abroad and has been the recipient of a Fulbright grant.
Vincent G. LoTempiois a registered patent attorney with the firm of Kloss, Stenger & LoTempio in Buffalo, New York. His practice focuses on intellectual property matters including patent, trademark, copyright prosecution, and infringement litigation. Mr. LoTempio is a consultant on patent issues to corporate and independent inventors. He has authored articles on patents in the Buffalo Law Journal and Buffalo Business First and he writes weekly articles on intellectual property in his personal LoTempio Law Blog. Also he lectures to businesses and inventors groups on how to identify and protect valuable intellectual property such as patentable subject matter.
Brendan S. Lillisis a registered patent attorney. He previously worked as a private software consultant in the health care industry. Mr. Lillis has developed and cofounded (with Vincent G. LoTempio) PatentHome.com, which serves as an educational resource for inventors to learn about intellectual property law through articles, audio recordings, and videos. Mr. Lillis is an avid speaker, conducting lectures on patent law to schools, corporations, and inventor’s organizations. He is currently a private practitioner in the Buffalo, New York, area, where he practices corporate and intellectual property law, specializing in software-related patent applications.
Praise for Previous Editions
The authors, both with wide experience in the patent industry, provide a clear, nontechnical explanation of the patent system and patent principles.
—Mechanical Engineering, Vol. 128, No. 4, April 2006