Teaching Chapter 16: Patents and Intellectual Property
Timing
This session can be placed almost anywhere in the sequence of a product development course. For project-based courses, an introduction to online patent searches should be included early in the design phase to prevent infringement, and also to aid in concept generation. We generally place this session about two thirds of the way through our course.
Objectives and Strategy
This chapter provides an overview of intellectual property (IP) in the context of product development and provides specific guidance for preparing an invention disclosure or provisional patent application. The chapter focuses on utility patents, since they have the broadest implications in product design. We have found it useful to invite a practicing patent attorney as a guest lecturer, with the objective of offering a more practical discussion of IP. However many lawyers are poor classroom instructors and may not engage the students, so it may be a good idea to combine a faculty lecture on the principles with plenty of Q&A with the attorney.
Session Outline
The session can follow this flow:
Definition of Intellectual Property
Four types of intellectual property are relevant to product design and development: (1) Patent, (2) Trademark, (3) Trade Secret, and (4) Copyright. Exhibit 16-2 presents a taxonomy of types of intellectual property. The chapter focuses on utility patents, since they have the broadest implications in product design.
Definition of a Utility Patent
Utility patents relate to a new process, machine, article of manufacturer, composition of matter, or a new and useful improvement of one of these things. The law requires that the invention must be (1) useful, (2) novel, and (3) nonobvious.
Preparing a Disclosure for a Utility Patent
The chapter focuses on a process for preparing an invention disclosure – in essence a detailed description of an invention. This disclosure will be in the form of a patent application, which can serve as a provisional patent application and with relatively little additional work could be a regular patent application. The steps in the process are:
Step #1: Formulate a Strategy and Plan
The team must decide on the timing of the filing of a patent application, the type of application to be filed, and the scope of the application.
Step #2: Study Prior Inventions
Prior-art should be studied to:
(1) Determine if their invention may infringe on existing unexpired patents.
(2) Get a sense of how similar their invention is to prior inventions and therefore how likely they are to be granted a broad patent.
(3) Develop background knowledge enabling the team members to craft novel claims (see the In-Class exercise below).
Step #3: Outline Claims
Claims describe certain unique characteristics of the invention. Don’t worry about the legal language / precision at this point, but have the team focuson the unique elements of the invention.
Step #4: Write a Description of the Invention
This is the bulk of a patent application, and describes the actual invention with text and figures.
Step #5: Refine Claims
The claims are a set of numbered phrases that precisely define the essential elements of the invention. A patent owner can prevent others from practicing the invention only through the claims. Claims are expressed verbally, but must adhere to a strict mathematical logic.
Step #6: Pursue Application
In most cases, the inventor will deliver the draft application to a patent attorney or other IP professional for refinement and formal application. The team has four different ways they can proceed with an invention disclosure:
(1) File a provisional patent
(2) File a regular patent
(3) File a cooperation treaty or PCT application (to pursue international patent protection)
(4) Defer the application indefinitely
Step #7: Reflect on the Results and the Process
The team should reflect on the process, and consider the questions discussed at the end of the chapter. For example: How strong is the team’s IP? Are the features of the invention so novel and valuable that they really want to prevent competitors from direct competition?
In-Class Exercise
Several types of in-class exercises are possible. For example:
A. Ask students to look up a patent number on a product they own and explain to the class what the novel, useful, and non-obvious invention is and how the claims describe it.
B. Discuss one patent in detail (such as the coffee cup sleeve presented in the chapter or bring along a product with a patent you can study in advance) and then ask the students to identify some ways to design around the patent claims. They would not necessarily know if their workarounds will perform better, but they should be able to develop some ideas how they would pursue such a strategy.
C. Have each student translate his or her project into the functional domain by creating a functional diagram (see Exhibit 7-4). Next, have each student pick a single function and perform an online patent search (in real time on their own laptops) for patents related to the function. Discuss how understanding the ideas described in the patents may lead to novel ideas for their own project and possibly an approach to designing around the patents.
For example, a solar/battery-powered light can be described in the functional domain as:
This session can be placed almost anywhere in the sequence of a product development course. For project-based courses, an introduction to online patent searches should be included early in the design phase to prevent infringement, and also to aid in concept generation. We generally place this session about two thirds of the way through our course.
Objectives and Strategy
This chapter provides an overview of intellectual property (IP) in the context of product development and provides specific guidance for preparing an invention disclosure or provisional patent application. The chapter focuses on utility patents, since they have the broadest implications in product design. We have found it useful to invite a practicing patent attorney as a guest lecturer, with the objective of offering a more practical discussion of IP. However many lawyers are poor classroom instructors and may not engage the students, so it may be a good idea to combine a faculty lecture on the principles with plenty of Q&A with the attorney.
Session Outline
The session can follow this flow:
- Definition of Intellectual Property
- Definition of a Utility Patent
- Preparing a Disclosure for a Utility Patent
Definition of Intellectual Property
Four types of intellectual property are relevant to product design and development: (1) Patent, (2) Trademark, (3) Trade Secret, and (4) Copyright. Exhibit 16-2 presents a taxonomy of types of intellectual property. The chapter focuses on utility patents, since they have the broadest implications in product design.
Definition of a Utility Patent
Utility patents relate to a new process, machine, article of manufacturer, composition of matter, or a new and useful improvement of one of these things. The law requires that the invention must be (1) useful, (2) novel, and (3) nonobvious.
Preparing a Disclosure for a Utility Patent
The chapter focuses on a process for preparing an invention disclosure – in essence a detailed description of an invention. This disclosure will be in the form of a patent application, which can serve as a provisional patent application and with relatively little additional work could be a regular patent application. The steps in the process are:
Step #1: Formulate a Strategy and Plan
The team must decide on the timing of the filing of a patent application, the type of application to be filed, and the scope of the application.
Step #2: Study Prior Inventions
Prior-art should be studied to:
(1) Determine if their invention may infringe on existing unexpired patents.
(2) Get a sense of how similar their invention is to prior inventions and therefore how likely they are to be granted a broad patent.
(3) Develop background knowledge enabling the team members to craft novel claims (see the In-Class exercise below).
Step #3: Outline Claims
Claims describe certain unique characteristics of the invention. Don’t worry about the legal language / precision at this point, but have the team focuson the unique elements of the invention.
Step #4: Write a Description of the Invention
This is the bulk of a patent application, and describes the actual invention with text and figures.
Step #5: Refine Claims
The claims are a set of numbered phrases that precisely define the essential elements of the invention. A patent owner can prevent others from practicing the invention only through the claims. Claims are expressed verbally, but must adhere to a strict mathematical logic.
Step #6: Pursue Application
In most cases, the inventor will deliver the draft application to a patent attorney or other IP professional for refinement and formal application. The team has four different ways they can proceed with an invention disclosure:
(1) File a provisional patent
(2) File a regular patent
(3) File a cooperation treaty or PCT application (to pursue international patent protection)
(4) Defer the application indefinitely
Step #7: Reflect on the Results and the Process
The team should reflect on the process, and consider the questions discussed at the end of the chapter. For example: How strong is the team’s IP? Are the features of the invention so novel and valuable that they really want to prevent competitors from direct competition?
In-Class Exercise
Several types of in-class exercises are possible. For example:
A. Ask students to look up a patent number on a product they own and explain to the class what the novel, useful, and non-obvious invention is and how the claims describe it.
B. Discuss one patent in detail (such as the coffee cup sleeve presented in the chapter or bring along a product with a patent you can study in advance) and then ask the students to identify some ways to design around the patent claims. They would not necessarily know if their workarounds will perform better, but they should be able to develop some ideas how they would pursue such a strategy.
C. Have each student translate his or her project into the functional domain by creating a functional diagram (see Exhibit 7-4). Next, have each student pick a single function and perform an online patent search (in real time on their own laptops) for patents related to the function. Discuss how understanding the ideas described in the patents may lead to novel ideas for their own project and possibly an approach to designing around the patents.
For example, a solar/battery-powered light can be described in the functional domain as:
The student may choose to search for patents related to the “orientation of objects” (e.g. camera orientation, etc.) and may be able to use (expired) patents in this area or design around the (active) patents.