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University of California, Santa Barbara

College of Engineering

Technology and Management Program

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The Art of Invention:

An Introduction to Patents and Intellectual Property

TMP 131 / 251 – Fall 2014

Instructor: Dr. Ilan Ben-Yaacov

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Announcements / Assignments

*  12/10/14: Additional instructor/grader office hours will be held in ESB 2213 at the following days/times:

*  Friday 12/12: 1-3pm

*  Monday 12/15: 2-4pm

*  Wednesday 12/17: 2-4pm

*  12/10/14: IMPORTANT: Final project for the class is due by 6AM on Friday 12/19.  Please email it to the instructor and the TA.

*  12/10/14: Notes 8 is now posted below.

*  11/19/14: Please turn in the branding assignment on page 13 of Notes 7 by 5pm on Tuesday 12/2.

*  11/19/14: Notes 6 and Notes 7 are now posted below.

*  11/14/14: Craig Prater’s slides are now posted below.

*  11/12/14: Notes 4 and Notes 5 are now posted below.

*  11/3/14: As mentioned in lecture, class on Wed 11/12 will be cancelled, and a make-up lecture will be held on Fri 11/14 from 2-3:15pm in PHELPS 1431.  Anyone who cannot attend this lecture may come to my office hours on 11/12 or 11/19.  I will also be available on 11/14 from 3:30-4:30pm, but you must email me in advance if you wish to see me at that time.

*  10/31/14: Information about all guest lectures is now posted below.

*  10/29/14: Apple’s slide-to-unlock patent can be found here.  The “engineering around patents” assignment is due in class on Monday 11/3.

*  10/23/14: Notes 3 is now posted below.  Complete the claims exercise on page 7 of Notes 3 and submit by email before 5pm Tuesday 10/28.

*  10/17/14: Notes 2 is now posted below.

*  10/10/14: Please read all documents related to the Yoga patent by Monday 10/20/2014.

*  10/10/14: Notes 1 is now posted below.

*  10/3/14: Instructor office hours on Wed 10/8 will be moved to 9-11am in ESB 2213.

*  10/2/14: First class meets 10/6/2014.  Please read Glossary of Patent and IP-Related Terms and the Final Publication of the Yoga Patent.

*  10/2/14: Welcome to the course!

 

 

Syllabus – Course Details

 

Lecture:                          Mon / Wed 3:30-4:45pm in PHELPS 1444

Instructor:                      Dr. Ilan Ben-Yaacov, ESB room 2213, ext 5295, ilan[at]engineering.ucsb.edu

Office Hours:                 Wed 11:00am-1:00pm in ESB Room 2213

Grader:                            Scott Myers, scottmyers[at]umail.ucsb.edu

 

 

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: November 5, 2014

Speaker: Craig Prater, CTO at Anasys Instruments, Santa Barbara

Topic: IP Strategies for Small/Medium Sized Businesses

 

2.    Date: December 1, 2014

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 Mutual NDA                                       

 

Sample Patent Disclosure Form

 

Patent Application Template (MS Word)

 

Final Project

 

Class Notes

Notes 1               Notes 6              

Notes 2               Notes 7              

Notes 3               Notes 8

Notes 4               Prater IP Lecture                          

Notes 5              

 

Patent Prosecution Case Study:  Yoga Patent

Original Filing

Non-Final Rejection

Howard Reference from Non-Final Rejection

Response to Non-Final Rejection

Issued Claims (as allowed)

Final Published Patent

 

Doctrine of Equivalence:

Winans Patent

Festo Article by Jennifer Miller

 

Patents from Several Santa Barbara Companies:

Sonos, Inc.

Transphorm, Inc.

Wyatt Technology Corporation

 

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)

 

USPTO Trademark Electronic Search System (TESS)

 

Google Patent Search                                    

 

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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