Beya2012 ibm patents_presentation.02070800-edn
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  • 1. Intellectual Property/ Patents Unleashing the Einstein in You!! Presented by: IBM Corporation
  • 2. Intellectual Property & Patents
    • Want to be known eternally for an outstanding technological design?
    • This workshop will explore intellectual property concepts and the importance of filing patents in the workplace.
    • We will discuss the life cycle of a patent: from idea to company approval to USPTO acceptance to licensing.
    • Receive tips from some of IBM's leading patent authors and intellectual property counsel.
  • 3. History of Innovation 60 Years of World Class Research
  • 4. History of Patent Leadership 19 Consecutive Years of most US Patents
  • 5. History of Technical Diversity Profile of A Black IBM Inventor
    • In 1985, Dr. Mark Dean, and his co-inventor created a microcomputer system with means for attaching peripherals like disk drives, video gear, microphones, speakers, and scanners. Dr. Dean holds three of IBM ’s original nine PC patents.
    • Holder of 20 patents
    • First Black IBM Fellow 1996
    • Black Engineer of the Year Award 1997
    • National Inventors Hall of Fame in 1997.
    • Currently, IBM VP & CTO of IBM Africa.
    Patent #4528626 Today: IBM has 2 Black IBM Fellows and 9 Black IBM Distinguished Engineers
  • 6. History of Technical Diversity Today ’ s IBM Panelists
  • 7. Agenda   Topic Speaker 1 Opening & Introductions Drew Valentine, VP, Human Resources 2 IP / Patent Concepts, Key Terms Eustus Dwayne Nelson, Esq. Patent Attorney 3 From Idea to Application Pascal Nsame, Inventor 4 USPTO Filing process Dr. Ruthie Lyle, Inventor, USPTO Patent Agent 5 Infringement Analysis to Licensing Stacy Brown, Patent Engineer 7 Q&A
  • 8. Intellectual Property Primer Patents: Protect inventions that are new, useful, non-obvious. Owner has right to exclude others from making, using or selling patented invention for limited time, in exchange for disclosing invention to public.
    • Copyrights:
    • Protect the particular
    • expression of an idea
    • against copying
    • (e.g., copyrights
    • protect the expression
    • but not the function -
    • of computer code). Protection is much narrower than for patents but term is much longer.
    Trademarks: Identify the source of specific goods or services. Potentially very valuable: Provide customer recognition. Protection lasts as long as owner uses mark. Trade secrets: Protect business or technical information for Economic advantage. Protection lasts as long as secrecy is maintained.
  • 9. Patent Anatomy
    • Front Page
      • Dates: Filing, Publication, Issue, Assignee, Author
      • Citations & Related Patent Data
      • Abstract
    • Figures
    • Specification
      • Defines terms used in the claims
      • Explains the figures
      • Describes the preferred and alternate embodiments (implementations)
    • Claims
      • Define the invention
      • Rely on the specification to set the stage
  • 10. Patent Draft Review Checklist
    • Are the specification and claims easy to read? Easy to understand?
      • Does the draft even remotely resemble your idea? If not, then it may take some work to recover.
    • Are all of the possible ways to implement the idea present in the specification? Best preferred embodiments?
    • Sexy title?
    • Draft provided in Word or equivalent? (graphics in PDF)
      • Use Track Changes & Comment features when reviewing
    • Revisions provided with change bars so you can focus on just the changes?
      • Or use BeyondCompare or some other document comparison tool
    • Did the attorney receive all of the post-disclosure comments (if applicable)? Prior art documents?
    • Have you avoided hard-to-discover claim elements?
  • 11. Infringement
    • 35 U.S.C. § 271
      • “ (a) Except as otherwise provided in this title, whoever without authority makes , uses , offers to sell , or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”
    • Established by identifying one or more claims that violates this law
      • All elements of your patent claim must be proven
  • 12. IP Licensing – Roles & Responsibilities
    • The goal for most Companies is to
      • Enter into licensing agreements
      • Use IP to help clients with enterprise development and business strategy
    • Roles
      • Engineering
      • Business
      • Legal
  • 13. The Rewards of Creating IP / Patents
    • You are named as an author of an invention
    • Opportunity to grow advancement in technology
    • Some companies give bonuses for the creation of IP
    • Some companies give commission for each license agreement created using IP you authored
  • 14. Useful Links
  • 15.