1 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 Patents MSE-415: Product Design Lecture 11

2 Rev: 02/12/2007 MSE-415: B. Hawrylo Lecture Objectives: Quiz Video Lecture Final presentations

3 Rev: 02/12/2007 MSE-415: B. Hawrylo An Introduction to the Patent System

4 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents There are 4 types of intellectual property that are relevant to product design and development

5 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents There are 4 types of intellectual property that are relevant to product design and development. 1. Patents 2. Trademarks 3. Trade Secrets 4. Copyrights

6 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 1. Patents: A temporary monopoly granted by a government to an inventor to exclude others from using an invention. In the U.S. it expires 20 years after the filing date. Invention must be disclosed!

7 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 2.Trademark: An exclusive right granted by a government to a trademark owner to use a specific name or symbol in association with a class of products or services. Has unlimited life time.

8 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 3.Trade Secret: Information used in a trade or business that offers its owner a competitive advantage and that can be kept a secret. Not granted by the government but maintained by the company.

9 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 4.Copyright: An exclusive right by a government to copy and distribute an original work of expression. Literature Graphics Music Art Software Lasts for up to 95 years!

10 Rev: 02/12/2007 MSE-415: B. Hawrylo 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

11 Rev: 02/12/2007 MSE-415: B. Hawrylo 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

12 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Overview of Patents Design Patent Prevent someone from producing or selling a product with the same ornamental design.

13 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Overview of Patents Plant Patent A 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

14 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Overview of Patents Utility Patent Protects 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.

15 Rev: 02/12/2007 MSE-415: B. Hawrylo 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

16 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Preparing a Disclosure 1.Formulate a strategy and a plan 2.Study prior inventions 3.Outline claims 4.Write the description of the invention 5.Refine the claims 6.Pursue application 7.Reflect on the results

17 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Step 1: Formulate a strategy and a plan Timing 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 bound notebook and having a witness sign and date each page.

18 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Step 1: Formulate a strategy and a plan Type of Application Regular or Provisional? Regular: Only option until 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.

19 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Step 1: Formulate a strategy and a plan Scope 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.

20 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Step 2: Study Prior Inventions Three 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.

21 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Step 2: Study Prior Inventions References 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.

22 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 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.

23 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 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 patent examiner that they have developed something useful, different and nonobvious.

24 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Step 4: Write the Description of the Invention The description/specification must be written in 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 else from practicing.

25 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 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. Step 4: Write the Description of the Invention

26 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 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. Step 4: Write the Description of the Invention

27 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Figures Formal figures for patents must comply with a variety of rules about labeling, line weight, and types of graphical elements. Step 4: Write the Description of the Invention

28 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Step 4: Write the Description of the Invention Reference Numerals

29 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Step 4: Write the Description of the Invention The detailed description will reference the numbers. Figure 1 A preferred embodiment of the invention is shown in figure 1. The seeing eye 5 Allows the vehicle to sense distances In front of it. The wheel 6 allows the vehicle to move as powered by the fan 34. And so on…

30 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents Defensive Disclosure Puts an innovation into the public domain. Since it becomes prior art anyone else is prevented from patenting it. Step 4: Write the Description of the Invention

31 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 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 comprised of a u, a v, and a w and wherein B is …

32 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 1.File a provisional patent application. <$100 Allows for ‘patent pending’ Option to pursue a patent. 2.File a regular patent application About $ 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

33 Rev: 02/12/2007 MSE-415: B. Hawrylo Chapter 14 - Patents 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

34 Rev: 02/12/2007 MSE-415: B. Hawrylo Next Week Lecture 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