| 《专利工程》连载完结 如何做好企业专利工程师-大岭IP
1.01365=37.8,每天学一点,一年大不同^_^
本文节选自《专利工程》第十一章,该章标题为:The Role of the Patent Engineer。
在本文中,作者提出了他认为企业的专利工程师应该如何工作,实际上,我们看到作者希望专利工程师可以利用自身对企业技术、市场的理解,和对专利法的了解,完成专利申请文件,包括权利要求书的起草,这无疑提出了很高的要求。作者认为专利申请时就需要考虑如果要对专利维权,是否可以证实其他人实施了我们的专利。
此后,作者又举了一个案例,来解释如何通过分析竞争对手的产品,来“拥有问题”,扩大自己的专利组合,实现更有价值的专利申请蔡加敏 。
至此命锁修神 ,我们对《专利工程》的选刊就此结束。据悉,本书已被国内的出版社引入,预计年内或者明年初就会上市,敬请大家期待本书的中文版。
今后,我们也还会选刊其他国外优秀的知识产权实务书籍。
本书的作者在柯达公司工作了30多年,在他退休前的几年间,他由研发岗位转到了知识产权管理岗位,负责柯达公司数字印刷技术的知识产权管理。他在这个岗位上与世界一流的科学家、工程师、专利代理人和律师一起工作,利用他的工程师精神,和同事们共同总结出了一套创造高价值专利组合并控制市场的方法,这就是本书的内容。
Patent Engineering: A Guide to Building a Valuable Patent Portfolio and Controlling the Marketplace
The Patent Engineer in a Corporation
Theactivities in which a patent engineer can add value depend on the nature ofyour organization. Challenges faced by a manufacturing company proposing toproduce and market products using a novel technology would differ from those ofa university seeking to license, but not actually produce, products using itstechnology. A financial institution that seeks to invest in companies, but thatneither develops nor markets technology would have still other needs that aredistinct from either a manufacturer or a university.
Some lawfirms either help clients extend patent portfolios or are involved with patentlitigation or both. The latter represents its clients in asserting its patentsagainst infringing companies or by defending them against assertions by othercompanies. Both of these types of law firms could use patent engineers for amultitude of reasons. These include using patent engineers to help deviseappropriate patent strategies or devise tests of the products in question thatshow or contradict infringement allegations. Furthermore, whereas it is oftenadvantageous for a manufacturer have patent engineers permanently on staff, afinancial institution/investment firm or law firm may want to contract withspecific individuals who can help guide their activities related to specificpatent assertions or patent applications. A university may want to have a smallpermanent group of patent engineers whose expertise is augmented by addingpatent engineers on a contractual basis. Let us examine each case separately,starting with manufacturing organizations.
Amanufacturer endeavors to establish a proprietary advantage over its competitionby producing products using its novel technology. Accordingly, a patentengineer would be involved in 1) establishing a patent portfolio that protectsthe intellectual property of the company; 2) collaborations between the companyand others in co-development activities; 3) ensuring the company can produceand market its goods and services while reducing the risk of patentinfringement; and 4) establishing a patent portfolio of intrinsic andmarketable value. Let us explore each of these topics separately.
Relyingsolely on your engineering, R&D, or management teams is seldom effective indevising and maintaining a strong patent portfolio. As discussed in an earlierchapter, inventors often fail to recognize that they have an invention, and,even when they do, and proceed to submit an invention disclosure, they tend tofocus on the solution to the specific problem rather than on owning theproblem. The resulting patent application or applications tend to be toonarrowly focused and easily circumvented by a competitor.
Theengineers are deeply immersed in their assigned projects and under great timepressures to complete them. They seldom have time to put together a coherentpatent application, let alone work with the attorneys to produce one. Criticalaspects such as conducting related art searches are often not thoroughlyperformed, leaving the strong probability that the patent application would berejected by the patent office. Likewise, the management team has its targetsthat must be achieved within tight time and budget constraints. All too often,the management team looks upon the filing of patent applications as a nuisancethat is undesired and unnecessary. They certainly do not want their teammembers devoting time and effort to filing applications. And, in any case,neither the management nor engineering staff have an adequate working knowledgeof patent law to enable them to write disclosures that protect the company’sintellectual property while circumventing obvious ness rejections from thepatent office.
Theprimary role of a patent engineer is to formulate and execute an advantageouspatent strategy. While the technical staff that is dedicated to the projectcannot be entirely freed from engagement in the filing of the resulting patentapplications , the use of a patent engineer will minimize the time that thestaff is distracted from their primary obligations.
Thepatent engineer would first meet with the technical team members to preciselydetermine what problems they have solved, are in the process of solving, orintend to solve. From this information, generally in the presence of the staffmembers, the patent engineer will propose draft claims, or at least anindependent claim, for each of the perceived inventions. Developing theseclaims in the presence of the project staff ensures that the patent engineerunderstands the problem and that the staff understands the invention orinventions and the wording of the claims thereof. Both aspects are vital.
It isperhaps obvious that the patent engineer needs to understand both the problemsand the solutions in order to formulate the patent strategy. However, it isequally important that the technical staff understand what is being filed.Remember, patent applications should be filed with the intent of asserting theissued patents against infringing companies. If an infringement is found加农贝克 , thetechnical staff must be able to clearly describe the details of theirinvention, as written in the patents, as well as how it is being infringed.
Once theindependent claims are written, the patent engineer can proceed to conduct aprior art search. The search can often start by using references supplied bythe project staff. Alternatively or concurrently, the search can be conductedusing vernacular searches of the proposed independent claims that are withinthe capabilities of many modern patent search engines. The searching revealsthe most relevant prior art and will help the patent engineer both refine theclaims, if necessary, and to write the background section of the forthcomingdisclosures so as to argue against the presently proposed inventions beingeither inherent to or obvious in light of prior art .
Thepatent engineer would next explore alternative methods of accomplishing similartechnological goal s. This can be done in conjunction with the project teammembers as well as examining the approaches taken by competitors. Applicationscan be drafted covering these alternatives with the goal of owning the problemand, in particular, owning those portions of the problem that are needed byyour competition. This equips your company with revenue-enhancing patents thatare extremely valuable either for licensing purposes or in the event thatpatent exchange or cross-licensing agreements are necessary.
Perhapsmost important in formulating a patent strategy is to make sure that theinformation presented in an application does not preclude the obtaining ofpatents on future applications. The patent engineer is responsible to ensurethat the filing of individual applications is consistent with a comprehensiveplan to secure the most coverage for the least expense of dollars andproject-team time.
Tacklednext are proposed dependent claims for the specific inventions presented to himby the project team, as well as both independent and dependent claims for thoseapplications that would cover alternative solutions. The project team canreview these claims at this time if so desired. However, the specific review ofthese claims now is less important than having them involved in drafting theinitial independent claim or reviewing the entire disclosures after they hadbeen drafted.
After completing the draftsof the claims and the formulation of the patent strategy that will be pursued,the patent engineer can write the appropriate disclosures that will beincorporated into and comprise most of the patent applications. This caninclude the sketching of figures, tables, and charts, although frequently themembers of the project team may have material that is suitable for this use.
The drafts shouldincorporate all patent applications that will comprise the initial filings. Itis beneficial to also include, if and to the extent possible, the draft s ofthe applications that will be filed subsequently, recognizing that thoseapplications may be incomplete because not all information is available. Thiswill allow the project team members to assess the proposed strategy and alsoensure that the disclosures to be filed do not prematurely disclose informationthat will be claimed in subsequent applications.
Once thepatent applications have been drafted by the patent engineer and reviewed bythe appropriate members of the project team, it is time to present those applicationsto the legal expert who will be filing and prosecuting them. The legal expert,who is an attorney or patent agent, will review the applications and makeappropriate legal revisions to them,廖晓乔 and may suggest revisions to tighten thelegal wording of claims, ensure that the claims are supported by the disclosure,and to be certain that proper procedure is followed. One example of the latterrelates to the use of the words a and the. The first time that an article isreferred to it has to be prefaced with the indefinite article a. Subsequently,as the article has now been defined, it must be referenced with the definitearticle the. This is just a sample of the detail that is involved in properly filingpatent applications古浪政府网 , but a failure to follow correct procedure, as well aspatent law, can rapidly derail the best of proposed patent applications. Thecautionary note here is that appropriate legal expertise must be involved inthe patent application process.
Broadening Your Patent Portfolio—An Example
As thefocus of this book is on generating a patent portfolio that maximizes the valueof your company’s intellectual property, let us illustrate the process justdiscussed with a hypothetical example. Let us first consider an example whereyour company uses technology distinct from that used by your competitors. Inthis example, companies K and X both produce electrophotographic printers. Inboth instances, a primary imaging element (a more general term than“photoreceptor”) is uniformly electrostatically charged. The primary imagingmember is then exposed to light, pixel by pixel辛格瑞拉 , using an exposure device,thereby creating an electrostatic latent image. The latent image is convertedinto a visible image by dusting the electrostatic latent image with toner.
Theexposure devices used by companies K and X are totally different. Company Kuses an array of LEDs that traverse the entire width of the primary imagingmember and城口老腊肉 , upon being triggered uses a writing algorithm contained in thecentral processing unit to expose a single pixel when required. The principaladvantage of this system is that it does not introduce any distortions to thepixels along the width of the primary imaging member because the light emittedby each LED impinges normally (i.e. at a right angle) onto the primary imagingmember.
Incontrast, Company X creates the electrostatic latent image by exposing theprimary imaging member, pixel by pixel, by using a laser scanner. In thisdevice, a laser is pulsed at a correct time to expose the primary imagingmember pixel by pixel. In order for the light to impinge on the correct portionof the primary imaging member, the light is reflected into a rotating polygonalmirror, which then sends the beam to the appropriate region of the primaryimaging member.
Both theLED array and laser scanner have their own advantages and disadvantages. It isclear that neither company would use the technology of the other company’sexposure technology姜潮麦迪娜 , but would most likely need technology patented by theother company in its other subsystems, thus creating a need for either a patentexchange agreement between the two companies or one company’s being able toextract licensing fees from the other or even prevent the other company fromentering into a desired market for proposed products.
Let usnow assume that a major deficiency of laser scanner technology is that thelaser beam becomes elongated as it impinges the primary imaging member atangles less than 90°. Assuming that the laser is located at the center of theprimary imaging member, as the beam is deflected to expose pixels at theextreme edges of the primary imaging member, it becomes elongated much the waya flashlight beam illuminating a wall at an oblique angle is elongated. Thiscreates distortions in the pixel s that then give rise to distortions and imagedegradations in the final, visible print.
Company Kdecides that it would be advantageous to obtain patent coverage on methods andapparatus that would be important to Company X, even though such intellectualproperty would not be used in Company K’s products. This is important ifCompany K is to own the problem, or at least enough of the problem so thatCompany X would have to pay licensing fees or negotiate a patent exchangeagreement with Company K.
Accordingly,the patent engineer calls a meeting, inviting engineers specializing in optics,exposure and writing systems, and imaging algorithm s. It should be rememberedthat, in order to obtain a patent, a non-obvious and novel solution to aproblem must be proposed. Company K cannot obtain a patent just on the ideathat it would be beneficial to correct the distortions created by a laserscanner. One must propose how that would be done.
In themeeting, several ideas are advanced. These include:
1.Changing the writing algorithm in a prescribed manner so that the pixels thatare exposed correct for the distortions in the final print.
2.Varying the rotational velocity of the polygonal mirror so that the pixels tobe exposed are selected to minimize distortions.
3.Introducing a curve into the primary imaging member so that the laser beamimpinges onto it at a right angle.
Time isthen spent in the meeting discussing how each of these proposals could beimplemented and the impact of the implementation on the functioning of othersubsystems. After due discourse, it is decided that proposal 3 would be difficultto implement and it is unlikely that Company X, or any other foreseeable company,irrespective of the actual products being produced by the other companies (thatis, it need not be in the same product line or even be a competitor) wouldactually desire to use such technology.
This is atough decision because it involves looking out as many as 20 years into thefuture. However, if there is little, if any, foreseen interest in a solution toa problem, it probably is not worth the expense of obtaining a patent. CompanyK may simply wish to publish the proposal to preclude a different company frompatenting it.
Proposals1 and 2 appear to have more direct applicability to the products of Company X.Accordingly吉象吉送 , Company K has its technical team members design specific equipmentand methods that would allow each of these proposals to be implemented.
As apatent is limited to a single invention, the patent engineer writes proposedindependent claims for each of these ideas to totally capture the inventions.It should be remembered that each patent is limited to a single invention. Inother words金成焕 , if the technology covered cannot be described by a singleoverarching claim, the patent engineer may have to use the independent claimsto draft multiple applications. Once this has been accomplished, a prior artsearch on the proposed independent claims can be conducted. The results of thissearch may give rise to additional inventions that should be patented orrequire that the independent claims be modified. Once this has been done,appropriate dependent claims can be written, followed by the drafting and filingof the patent applications.
Theadvantage to Company K of obtaining these patents is two-fold. First, if theanalysis leading to these patents was done thoroughly and correctly, thepatents specifically address problems that Company X will have to address. Thismakes its obtaining access to Company K’s patents very important and mayencourage it to negotiate cross-licensing agreements that gives access byCompany K to technology that it needs from Company X without surrenderingtechnology that may be more valuable to Company K. Moreover, as publishedpatent applications are frequently used by corporate intelligence to assesswhere its competition is heading, these patents can serve to mislead Company Xwith respect to the future products of Company K.