University of California, Santa Barbara
College of Engineering
Technology and Management Program
The
Art of Invention:
An Introduction to Patents and Intellectual Property
ENGR
131 / 251 – Winter 2013
Instructor: Dr. Ilan Ben-Yaacov
Announcements
/ Assignments
3/8/13: Notes 9 and slides from Craig Prater's Talk are now posted
below.
3/4/13: Notes 8 is now posted below. Please read the Festo Article and look over the Winans Patent
prior to class on Mon 3/11.
2/27/13: Notes 7 is now posted below.
2/26/13:
Please note that the due date for the Final Project has been changed to Thursday 3/21 by 5pm. Updated information can be found here or at the link in the Handouts
section below.
2/26/13: Notes 6
is now posted below.
2/13/13: Notes 5 and Lisa Greenwald-Swire’s Trademarks Talk are now posted below. Branding
Exercise, due by 12pm on Wed 2/20,
is on page 3 of Notes 5.
2/6/13: IMPORTANT NOTE: Trademark/Branding talk by Lisa Greenwald-Swire on Monday 2/11 will be held in Elings Hall (CNSI) Room 1601 from 2-3:15pm!
2/6/13: Notes 4 is now posted below.
1/31/13:
Please review the non-final rejection,
the ‘Howard’ reference from the
non-final rejection, and the response
to the non-final rejection from the Yoga patent by Monday 2/4.
1/29/13: Apple’s
slide-to-unlock patent can be found
here. The “engineering around patents” assignment is due in class on Mon 2/4.
1/23/13: Notes 3
is now posted below. Complete the claims
exercise on page 7 of Notes 3 and
submit in class on Wed 1/30.
1/16/13:
Information about guest lectures this quarter is now posted below.
1/16/13: Notes 2
is now posted below.
1/9/13:
Please read all documents related to the Yoga patent and look over the Sample Patent Disclosure Form by Wed
1/16.
1/9/13: Notes 1
is now posted below.
1/3/13:
First class meets 1/7/2013. Please read Glossary of Patent and IP-Related Terms
and the Final Publication of the
Yoga Patent.
1/3/13: Welcome
to the course!
Syllabus
– Course Details
Lecture: Mon / Wed 2:00-3:15pm
in HSSB 1232
Instructor: Dr. Ilan Ben-Yaacov, ESB
room 2213, ext 5295, ilan[at]engineering.ucsb.edu
Office Hours: Wed 12:00-1:45pm in ESB Room
2213
Course Description
This
3-unit course is designed to provide emerging inventors, entrepreneurs, and scientists
with a working knowledge of intellectual property (patents, copyrights,
trademarks, and trade secrets), with the main focus being on patents. We
will cover the basic functions of patents (what rights a patent gives you),
structure of patents (what elements must be included in a patent application),
patent prosecution (process for getting a patent issued), obtaining coverage in
foreign jurisdictions, and discuss general patenting and IP strategies for
businesses, as well as several other topics, including special topics from 1-3
guest lecturers (dates/times TBA).
In
addition to weekly lectures, there will be weekly reading assignments, several
written assignments, and students will also complete a final project which
entails drafting an entire patent application.
Students may optionally choose to file the applications which they
draft. Grades for the course will be
determined approximately 25% by attendance, 25% by the written assignments, and
50% by the final project.
Guest Lectures:
1. Date: Feb
11, 2013
Speaker: Lisa Greenwald-Swire,
Principal in the Silicon Valley office of Fish & Richardson
Topic:
Trademarks and Branding
2. Date: March
6, 2013
Speaker: Craig Prater,
CTO at Anasys Instruments, Santa Barbara
Topic: IP
Strategies for Small/Medium Sized Businesses
3. Date: March
13, 2013
Speaker: Steven Sereboff,
Patent Attorney at SoCal IP Law Group, LLP
Topic:
Patent Litigation
Handouts
Glossary
of Patent and IP-Related Terms
Determination
of Patent Inventorship
Sample
Patent Disclosure Form
Patent
Application Template (MS Word)
Final
Project
Class
Notes
Notes
1 Notes 6 Branding/Trademarks
Slides
Notes
2 Notes 7 Prater IP Lecture
Notes 3 Notes 8
Notes 4 Notes 9
Notes 5
Patent
Prosecution Case Study: Yoga Patent
Howard Reference from Non-Final Rejection
Response to Non-Final Rejection
Doctrine
of Equivalence:
Festo Article by Jennifer Miller
Patents
from Several Santa Barbara Companies:
Useful References
Patent – Wikipedia Entry:
http://en.wikipedia.org/wiki/Patent
Trade Secret – Wikipedia Entry:
http://en.wikipedia.org/wiki/Trade_secrets
Trademark – Wikipedia Entry:
http://en.wikipedia.org/wiki/Trademark
Patent Cooperation Treaty (International Filing) –
Wikipedia Entry:
http://en.wikipedia.org/wiki/Patent_Cooperation_Treaty
JOM Article on U.S. Provisional Patent Applications:
http://www.tms.org/pubs/journals/JOM/matters/matters-0002.html
JOM Article on Divisional, Continuation, and CIP
Patent Applications:
http://www.tms.org/pubs/journals/JOM/matters/matters-0406.html
Summary of What is Included in a Specification (Disclosure):
http://www.patentlens.net/daisy/patentlens/2341.html
Patent Claims – Wikipedia Entries:
http://en.wikipedia.org/wiki/Claim_(patent)
http://en.wikipedia.org/wiki/List_of_patent_claim_types
Difference Between Filing
Date and Priority Date:
http://www.cambia.org/daisy/patentlens/2343.html
Useful Links
U.S. Patent and Trademark Office (USPTO) Patent
Database
USPTO
Patent Application Information Retrieval (PAIR)
About the Instructor
Dr.
Ben-Yaacov received his PhD in Electrical and Computer Engineering from U.C.
Santa Barbara in 2004. Since 2004, he
has served as a lecturer at UCSB in the ECE Department, the College of Creative
Studies Physics program, and the TMP, teaching semiconductor processing,
circuits, general physics, EE project design, and IP/patent courses. Since 2007, he has been operating an
independent IP consulting business, primarily focusing on patents, trade
secrets, and trademarks. He also manages
the IP portfolio of a local semiconductor company. His IP areas of expertise include general IP
strategy, patent drafting and prosecution, IP portfolio advising and
management, domestic and foreign filing strategies, establishment of trade
secrets, infringement analysis, IP due diligence for investors, and licensing
agreements.
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of Engineering || UCSB TMP Program
|| Ilan Ben-Yaacov's
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