Patent Strategy for Researchers 2e 2nd Edition

H. Jackson Knight is a Patent Associate with the EI DuPont de Nemours & Conpany, Inc, where he has experience in many different phases of technology development, including process engineering and operation, research and development, and applications research. He has been working in patent matters for over 20 years and is registered to practice before the US Patent and Trademark Office. He has a BSc in Engineering from Auburn University and a Masters of Engineering from the University of Virginia. Currently he is a Group Team Leader responsible for managing intellectual property for DuPont’s Advanced Fibers Systems and DuPont Personal Protection businesses.

Preface

Since the first publication of this book, the world of intellectual property has taken center stage around the world as countries realize the value of having consistent and enforceable patent systems and as companies and inventors attempt to obtain patents globally which are vital to their business. There have been changes throughout the spectrum if the intellectual property world. The harmonization of patent laws and practices has continued. Countries have had to deal with patent issues concerning such things as software and biotechnology, two fields where much was previously unpatentable. The internet has made the acquisition of technology and copies of patent publications a simple matter of; both are available to the most remote and independent type of inventor. Much has been written on maximising the return from the patents a company owns. Emphasis has been placed on making sure one audits the patents they have, licensing any patents which can provide additional revenue, a! nd finally making sure that one obtains some type of patent protection on their business methods which utilize computers.

Regardless of the technology, all potential inventors need a good foundation of understanding of the patenting system, and this is what this book attempts to provide. This book is not meant to be an advanced text of all the possible strategies available to an inventor or a company. It remains a basic guide for the inventor; a source of information to read and then keep for further reference. College students should find this information very valuable because rarely are they exposed to patents until they gave earned their degree. Patent agents and attorneys may find some new ideas in this book, however, the primary use for this book is as a guidebook for their clients.

One issue that was perhaps underemphasized in the first edition was that the information contained in this book applies to all types of inventors. Much of the information will be readily applicable to inventors in corporate technical organizations. Despite the fact that the author also has a background in a corporate technical organization, independent inventors and academic inventors will also obtain benefit from a study of the information in this book. The concepts expressed here are applicable widely across many different types of products and patent types.

My intent with the first edition of this book was to write a book which needed very little updating, and in many respects that was accomplished. However, there has been a constant flux in the patent law over the past few years so many changes are now necessary. The book still retains its general tone; this is not an in-depth guide of all the quirks of the latest patent law changes, but rather an overview of tools one can use while working with a patent attorney or agent.

Chapter 1 on Basic Intellectual Property Concepts has been updated to include some of the major new changes in patent laws and additional clarifying information on basic concepts and international treaties. New concepts have been added on the informational value of patents in Chapter 2 on The Value of Patents. Some additional strategy techniques have been added to Chapter 3 on Developing a Strategy.

From a book construction standpoint, a major change in this book is a reorganization and streamlining of the chapters to eliminate duplication that was present in the original book. New sections were added throughout these chapters also. Chapter 4 on Researching with Intellectual Property in Mind has expanded to include more information on how proficient inventors get ideas and invent. A new Chapter 5 on Infringement and Freedom to Operate adds important information to better help one understand this important facet of intellectual property. The remaining chapters were also updates and clarified throughout. Additional information was included in the Reference sections at the end of the book along with a new index.

I have many new friends because of this book, and I am grateful for the many kind words that have been said. I want to thank supervisor Paul Pearlman for his support of this second edition. I remain indebted to all the attorneys I have worked with through my career, and I believe I have learned something from all of them. However, I want especially to thank Robert Shafer for his help and advice with all types of intellectual property matters. I wish him the best as he starts his well-deserved retirement later this year.

H. J. Knight – Midlothian, Virginia 1 October 2000