Patents and Inventions

Richard Dwight Church– Clarkson ‘63, B.E.E.– Who’s Who in America, since 1997

November 20, 2006

EE311: Junior EE Laboratory

• What: Electrical Engineering for various applications, including Aerospace and AG– created corporation to design and build electronics/fire

services

– consulted with various companies

– scientific projects now

• When: Last 40 years

• Where: US, Europe, other– where are you when asleep?

Personal Background

• ALL of US are, some more than others... – Who produces more ideas?

• “award in frame on wall,” clean desk and spotless office

• worker with desk piled high, papers (patents?) and things under a coffee cup, no time for paper work, just a workaholic (under paid?)

– There was a guy at IBM who submitted/received an Effective Award each week for over a year• for ideas only, no patents

• I was on a Technical Disclosure for a voltage regulator circuit and patent (see notes)

Who Are Inventors?

• Invented polarized glass and instant camera– dropped out of Harvard, started the Polariod Corporation

• His motto:

”Don’t do anything that someone else can do. Don’t undertake a project unless it is manifestly important and nearly impossible.”

• To generate original ideas, he valued:– independent study and solitary thinking

– organized brainstorming of multiple solutions

– intellectual curiosity with joy of discovery

– continuing education to stay ahead of technology

– emotional and social stability

Case Study: Edwin Land

• Thomas Edison is often credited with “inventing” the light bulb in 1870’s– Englishman Davey had a bulb prototype in 1810

– France, Russia, and Italy all had bulbs in 1870’s

– Edison made improvements that allowed commercialization

• Dr. J. Salk ‘helped’ develop a polio vaccine

• My experiences:– blocking oscillator circuit, toner control circuit, and high-

voltage systems

Inventing Is Usually A Team Effort

• Ideas happen, methods are scheduled– Ideas are spontaneous, keep notes of your ideas

• electric field detection (Aosta, Itlay, July 1969)

– Problem solutions create methods• see field detector notes

– Group brainstorming of solutions is helpful• NO is not a useful word

• negative attitudes, e.g., “you can’t get there from here,” create roadblocks to innovation

• Spontaneous invention is rare, yet so are “scheduled breakthroughs”

The Process of “Inventing”

• Patents are legal, registered documents that limit use of an idea, process, or method

• Valid for a period of time, a patent restricts others to use “claims,” e.g.:

– it is my method and you can’t use it… my lawyer will be in touch

– United States is 20 years from the date of filing the patent application

• Each country has different requirements/terms

– see Canadian patent documents

What’s a Patent?

• Individual inventors or companies wanting control over an idea, process, or method

• Why seek a patent?– To make money, fame, achievement (see

below)

Who Seeks Them and Why?

US5830035: Toe puppet Inventor: Budreck, David J. Published / Filed: Nov. 3, 1998 / Feb. 3, 1997

• The Idea: make a record of the concept

– write down all of your ideas, making sure you sign and date the document (use a notebook)

• Other steps: search of other patents, proceed with formal patent write up, submit to US Patent Office, wait for evaluation of your patent claims, patent issued if valid

• End goal: Patent issued with “claims” allowed

– joy over patent… party tonight!

Overview of the Patent Process

• INVENTOR'S DISCLOSURE – indicates what your invention is, how it works, how it can be

used, and improvement over known articles or methods

– includes one or more drawings of your invention, referenced by your written description

– your disclosure should be signed and dated by you and witnessed by at least two non coinventors

– it is recommended that you maintain a diary or laboratory notebook to keep track of the dates when you initially conceived your invention and the steps taken to reduce it to practice

Typical Steps in Patent Process*

*Reference: http://colitz.com/site/flow.htm

• PATENTABILITY SEARCH – conduct a patentability search in the US Patent

and Trademark office in Washington, D.C.

– this search will help better define the invention or to identify alternative embodiments

– the scope of a patent search is confined by cost considerations

Typical Steps in Patent Process*

• PATENT APPLICATION PREPARATION– preparation time of a patent application with an attorney

depends upon• technical complexity of the subject matter

• quality of inventor’s written description

• number of application revisions required during the application drafting process

– once the application is filed, it is "patent pending"

– licensing can take place any time after the application is filed• some manufacturers prefer to license an invention while it is still in

the patent pending stage

Typical Steps in Patent Process*

• PATENT APPLICATION AMENDMENT – the US Patent and Trademark office will issue an "Action" setting

forth their finds as to patentability and will require the Applicant to file a "Response.”• after one or two Responses, issues with the claims and the scope of

protection are usually resolved

– patent application process is dependent on many factors: e.g.,• complexity of any rejections, the reasonableness of the Examiner, the

closeness of the prior art, scope of patent protection requested, and the quality of the applicant's comments in responding to the Examiner

– this part of the process averages one to two years

Typical Steps in Patent Process*

• PATENT APPLICATION EXAMINATION– the US Patent and Trademark Office must find that the invention is

1. useful

2. novel

3. non-obvious (subjective judgment)

– under US law, application must be filed within one year of first public disclosure, sale or offer for sale• foreign countries often require filing of patent application prior to first

public disclosure

– the inventor cannot have earlier abandoned, suppressed or concealed the invention

Typical Steps in Patent Process*

• PATENT ISSUED– if the results of the patent examination are favorable, a patent

will be granted

– a patent is an exclusive right of its owner to exclude others from making, using, or selling your invention as defined in the claims of your patent for a period of time• in the US, it’s 20 years from the date of filing your patent

application

– after your patent has issued, maintenance fees must be paid at 3 1/2, 7 1/2, and 11 1/2 years from the date of issue to keep your patent in force

Typical Steps in Patent Process*

• A patent attorney is a heavy expense– litigation is the main concern of usable patents

– will a patent “pay off” its expense? (see Bean letter)

• Process may take years before release– hence the common phrase “Patent Pending”

• Only a few of all claims are typically allowed– most patents are “add-ons” improving existing

• Patents are sought on a world-wide basis– windshield wipers had 24 patents in 6 countries

Common Patent Related Issues

• What is a trademark or service mark, i.e., mark? – A trademark is a combination of words, phrases, symbols or designs, that

identifies/distinguishes the source of goods of one party from another.

– A service mark distinguishes the source of a service rather than a product.

– Indicated by TM, SM or ® symbol when registered.

• Mark registration is not required but affords certain legal advantages

• Marks can last indefinitely if the owner continues to use and renew it

Trademarks

• What is a copyright?– A copyright is a form of protection to “original works of authorship,” e.g.,

literary, dramatic, musical, artistic, and other intellectual works.

– This protection is provided to both published and unpublished works automatically.

– Indicated by “Copyright,” ““Copr.,” or the © symbol, e.g., © 2006 John Doe.

• Copyright registration is not necessary, but offers various legal advantages– Initial protection is 28 years @ $45 cost

– Can be renewed for up to 95 years!

Copyrights

• Copyrights give the owner and authorized users the exclusive right to:

– To reproduce the work in copies;

– To prepare derivative works based upon the work;

– To distribute/sell copies of the work to the public;

– To perform the work publicly (e.g., plays or music);

– To display the work publicly, etc.

• It is illegal to violate the rights provided by the copyright law to the copyright owner

– e.g., Google: A&M Records versus napster.

Copyrights

• No, marks, copyrights and patents all differ:– A mark identifies a source of goods or

services.

– A copyright protects “original works of authorship.”

– A patent protects an invention.

Don’t Patents, Marks and Copyrights Protect the Same Things?

• The most important concept to take away from this talk is to plan NOW for your next good idea

• No matter how well paid you are, or enjoy your job, lifestyle, location, or coworkers, NOW is the time to plan for the inevitable– your next, potentially life-changing, NEW EXPERIENCE!

• Plan ahead and seek NEW EXPERIENCES– be curious about the world around you!

In Closing, the Big Picture...