1 rev: 02/12/2007 mse-415: b. hawrylo chapter 14 patents mse-415: product design lecture 11

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Chapter 14Patents

MSE-415: Product DesignLecture 11

MSE-415: Product DesignLecture 11

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Lecture Objectives:Lecture Objectives:

•Quiz•Video•Lecture•Final presentations

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An Introduction to the Patent System

An Introduction to the Patent System

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Chapter 14 - Patents


There are 4 types of intellectualproperty that are relevant to productdesign and development.

1.2.3.4.

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There are 4 types of intellectualproperty that are relevant to productdesign and development.

1. Patents2. Trademarks3. Trade Secrets4. Copyrights

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1. Patents: A temporary monopolygranted by a government to an inventor to exclude others from usingan invention. In the U.S. it expires20 years after the filing date.

Invention must be disclosed!

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2.Trademark: An exclusive rightgranted by a government to atrademark owner to use a specificname or symbol in associationwith a class of products orservices. Has unlimited life time.

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3.Trade Secret: Information used ina trade or business that offers itsowner a competitive advantage and that can be kept a secret. Notgranted by the government but maintained by the company.

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4.Copyright: An exclusive right bya government to copy and distributean original work of expression.

LiteratureGraphicsMusicArtSoftware

Lasts for up to 95 years!

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Why Patent?

Why Patent?

•Patenting is Prestigious – I did it and I was first!

•Licensing possibilities.•Recoup dollars spent on R&D•Commercial advantage over competitors •Assure freedom to operate

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What can’t be Patented?

What can’t be Patented?

•Only a few limitations:

•An algorithm•A theory or scientific principle, e.g. the Theory of

Relativity•A human being

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Overview of PatentsDesign PatentPrevent someone from producing or sellinga product with the same ornamental design.

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Overview of PatentsPlant PatentA type of US patent providing protection for new varieties of plants produced by asexual breeding.

Raspberry Sundae® Crapemyrtle Lagerstroemia indica 'Whit I' Cultivar U.S. Plant Patent # 10297

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Overview of PatentsUtility PatentProtects patentable inventions such as processes, machines, compositions of matter and improvements Must be:Useful – Useful to someone.Novel – Not known publicly.Nonobvious – Would not be clearly evident.

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Planning for Successful

Patent Protection

Planning for Successful

Patent Protection•Keep and maintain good laboratory notebooks

•Routinely sign and date your notebook even prior to actually accomplishing your objective

•Have records “witnessed” with signature and date by an objective witness – a non-inventor

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Preparing a Disclosure1. Formulate a strategy and a plan2. Study prior inventions3. Outline claims4. Write the description of the invention5. Refine the claims6. Pursue application7. Reflect on the results

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Step 1: Formulate a strategy and a planTiming• Inventors should file a patent application PRIOR to any

public disclosure.• Delay application until just before disclosure. This

ensures that the design is as complete as possible.• The U.S. patent system grants priority among competing

patent applications based upon the date of invention.

This is done by describing an invention in a boundnotebook and having a witness sign and date each

page.

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Step 1: Formulate a strategy and a planType of Application• Regular or Provisional?

Regular: Only option until 1995. Full patent.Provisional: Needs only fully describe the invention.

Less cost and less effort to prepare and file.Results in ‘patent pending’. Valid for only 1 year.

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Step 1: Formulate a strategy and a planScope of Application• Which elements are most likely to be patented?

Typically the process of reviewing a product results in several elements that the team considers ‘novel’ or ‘nonobvious’.

• Who are the inventors?Personnel who participate in concept generation and the

subsequent design activities could be considered inventors.

Failure to name a person who is an inventor can result in the patent being declared not valid.

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Step 2: Study Prior InventionsThree key reasons for studying prior inventions…prior art.

1. Teams can learn whether an invention may infringe on existing unexpired patents.

2. Teams can get a sense of how similar their invention is to prior inventions and therefore how likely they will be granted a broad patent.

3. Teams will develop background knowledge enabling the members to craft novel claims.

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Step 2: Study Prior InventionsReferences

1. Existing and historical product literature.2. Patent searches.3. Technical trade publications.4. On-line resources

A file containing prior art must be kept and turned into the patent office shortly after filing the application.

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Step 3: Outline the Claims

1. Claims describe certain characteristics of the invention.2. Written in formal legal language and adhere to some

rules of composition.3. Make a list of the features and characteristics that the

team believes are unique and valuable.4. Worry about formal language later.

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Step 4: Write the Description of the Invention

1. Written in a way that someone with basic skills in the art could implement the invention.

2. Should also be a marketing document promoting the value of the invention and the weakness in existing solutions.

Description = Specification

The inventors must convince the patentexaminer that they have developed something useful, different and nonobvious.

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The description/specification must be writtenin a way that teaches, with enough detail, someone skilled in the art to practice the invention.

This is the trade-off for granting an‘exclusive monopoly’ to exclude anyone elsefrom practicing.

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A typical description includes the following elements.

1. Title: Short descriptive label.2. List of inventors: All inventors must be listed.3. Field of invention: Type of device, product, machine, or

method this invention relates to.4. Background of invention: State the problem the

invention solves. Explain context and what is wrong with existing solutions, why a new solution is needed and what the advantages are.

5. Summary of invention: Substance of the invention in summary form.


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A typical description includes the following elements.

6. Brief description of the drawings: List the figures in the description along with a description of each.

7. Detailed description: Usually the most detailed, contains detailed descriptions of embodiments of the invention along with an explanation of how they work.


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Figures

Formal figures for patents must comply with a variety of rules about labeling, line weight, and types of graphical elements.


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Reference Numerals

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Step 4: Write the Description of the InventionThe detailed description will reference the numbers.

Figure 1 A preferred embodiment of the inventionis shown in figure 1. The seeing eye 5 Allows the vehicle to sense distancesIn front of it. The wheel 6 allows the

vehicle to move as powered by the fan 34.

And so on…

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Defensive Disclosure

Puts an innovation into the public domain. Since it becomes prior art anyone else is prevented from patenting it.


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Defensive Disclosure

Claims are a set of numbered phrases that precisely define the essential elements of the invention.

Claims are expressed verbally but must adhere to strict mathematical

Step 5: Refine Claims

X=A+B+C…, where A=u+v+w…

An X comprising of an A, a B, and a C wherein A is comprisedof a u, a v, and a w and wherein B is …

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1. File a provisional patent application.• <$100• Allows for ‘patent pending’• Option to pursue a patent.

2. File a regular patent application• About $500.00 + legal fees for patent attorney.

3. PCT (Patent Cooperation Treaty) application• Allows a single patent application to initiate the

process of pursuing international patent protection.4. Defer application indefinitely (potentially a trade secret)

Step 6: Pursue Application

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Some things to consider:

• Are the distinct features of the invention reflected in the claim?

• What is the timing of future actions?• What went smoothly? What didn’t?• What did you learn that could improve the next process.

Step 7: Reflect on the Results of the Process

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Next WeekLecture 12 (Last)

November 28, 2007

Next WeekLecture 12 (Last)

November 28, 2007

• Homework #9 Research the prior art for other patents in your field of invention.

Present at least 3 patents that you could potentially infringe upon and explain how your invention differs. (15-points)

• Read Chapter 15 – Product development economics

• Final presentations in two weeks 2-3 sentence optional mission statement for judges

1 rev: 02/12/2007 mse-415: b. hawrylo chapter 14 patents mse-415: product design lecture 11

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