1. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Week 1 Dr. Tal Lavian (408) 209-9112 Tlavian@cs.berkeley.edu 321 Haviland Mondays 4:00-6:00

2. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 2 Today’s Agenda – Introductions Introduction to the course Course administration Schedule Some info about yourself Introduction to Intellectual Property Introduction to Patents

3. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 3 Patent Engineering Course This is an engineering class not a law class The course broadly covers patents as a business tool The use of intellectual capital for competitive advantage Protection and commercialization of engineering and scientific intellectual assets Examination of several patent litigation case studies focus on invention, innovation, patent and strategy

4. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 4 What will we do in this course? Mondays 4:00pm - 6:00pm Please be on time Patent – innovations, engineering, and strategy Industry lectures Few external presentations Students as “experts witnesses” Field trip – court visit SF or Oakland

5. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 5 What Will We Cover? Overview of the Patent System Publication, Public Use, and On-Sale Limitations Enablement and Best Mode Requirements Utility, Provisional, and PCT Application Novelty and Unobviousness Requirements Avoiding Patent Infringement Patentability and Infringement Comparison Strategies for Engineers who are Witnesses or Experts in Patent Lawsuits

6. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 6 Course Books REQUIREDOPTIONAL

7. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 7 Invited Lectures

8. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 8 Students Presentations Students’ presentations Topics on patent engineering in litigated cases Some examples from last year: http://www.cs.berkeley.edu/~tlavian/spring2009/patentEngineering.html http://www.cs.berkeley.edu/~tlavian/spring2009/patentEngineering.html

9. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 9 Students Presentations Present in 10-15 min a patent litigation case Case summary Parties, dates, history, issue in dispute, results Engineering aspects of the dispute The patent(s), technology, product Engineering aspects of the infringement The engineering view vs. the legal view Any proposed design around ? Volunteers to start next week

10. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 10 Grading - Attendance 2 units credit course You will be fine - Pass/Fail (it would be very hard to fail) Passing grade – requires attendance at all lectures (with one allowed unavoidable absence) Sign in for the class Patent blogs and mailing lists Students presentations – 15 min Prior Art search

11. Beijing Teaching class in Tsinghua University via UCB CET (March 29 th, April 5th) Need to reschedule those classes Suggestions … PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 11

12. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 12 Web Site(s) http://cet.berkeley.edu/ Http://cs.berkeley.edu/~tlavian bSpace

13. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 13 Who are you? Tell us about yourself: In about 60 seconds Your name, education, experience Goals for future What should we know about you Your patent, invention background experience What do you know about patents? How many patents have you read? Why are you here? What you would like to accomplish? Send me email with this info

14. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 14 Innovation: long-term health You need a healthy root system for the tree to flourish! Innovation! Patents Software Ideas Knowledge Work Processes Creativity Skills Trade Secrets Inventions Secret sauce Concepts

15. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 15 Patents as a Critical Business Tool Good patents are the cornerstone of almost any technology business Patent protection can provide significant incentive and motivation for further research expenditures An understanding of patents is critical for the successful commercialization of most technologies

16. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 16 Some facts Microsoft assets: IP: 95% Working capital: 4% Fixed assets 1% Other: 1%

17. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 17 Patent History Created by Congress in 1790 –“…to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Article 1, Section 8 July 31, 1790 – 1 st Patent –Samuel Hopkins patents potash –Cost : $4.00 Reviewed by Cabinet Members –Thomas Jefferson – Secretary of State –Henry Knox – Secretary of War –Edmund Randolph – Attorney General –George Washington – President www.uspto.gov, www.ipo.org

18. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 18 More Patent History 3 Patents Awarded in 1790 –First patent law enacted 1802 – US Patent and Trademark Office Created –Responsibility of granting patents/registering trademarks Atomic Energy Act of 1954 –Excludes nuclear purposes/atomic weapons American Inventors Protection Act (1999) –Most recent revision of patent laws New Legislation debate – 2008-2009 ….

19. PatentEng-Berkeley-Lavian Week 1: Introduction to Patent Engineering 19 US Constitution Rights are derived directly from US constitution, Article 1, section 8 –granting congress the power to promote the progress of science and useful arts by securing for a limited time to authors and inventors the exclusive rights to their respective writings and discoveries

20. PatentEng-Berkeley-Lavian 20 The Golden Age of Patents Presumption of validity strong Large verdicts / settlements abound Federal Circuit is unpredictable Threat of injection is real Week 1: Introduction to Patent Engineering