University of California, Santa Barbara
College of Engineering
Technology and Management Program
The
Art of Invention:
An Introduction to Patents and Intellectual Property
TMP
131 / 251 – Spring 2014
Instructor: Dr. Ilan Ben-Yaacov
Announcements
/ Assignments
5/26/14:
Kevin O’Connor of FindTheBest will be giving a talk
on Patent Assertion Entities and Congressional Patent Reform in class on Monday 6/2. Prior to class on 6/2, please read over the ‘073 Patent
that was asserted against FindTheBest, as well as the
judge’s
ruling in the case.
5/26/14: Lisa Greenwald-Swire’s Trademarks Talk is now posted below.
5/21/14:
Please turn in the branding assignment on page 3 of Notes 8 by 5pm on Tuesday
5/27.
5/21/14: Notes 7 and Notes 8 are now posted below.
5/14/14: IMPORTANT NOTE: Trademark/Branding
talk by Lisa Greenwald-Swire on Friday
5/23 will be held in Engineering
Sciences Building (ESB) Room 2001 from 12:30-2pm!
5/10/14: Notes 5 and Notes 6 are now posted below.
4/29/14: Notes 4 is
now posted below.
4/21/14:
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 4/28.
4/21/14:
Apple’s slide-to-unlock patent can be
found here. The “engineering
around patents” assignment is due in class on Monday 4/28.
4/16/14: Notes 3 is now posted below. Complete the claims exercise on page 7 of Notes 3 and submit in
class on Wednesday 4/23/14.
4/16/14:
Information about guest lectures this quarter is now posted below.
4/9/14: Notes 2 is
now posted below.
4/3/14:
Please read all documents related to the Yoga patent by Wed 4/9/2014.
4/3/14: Notes 1 is
now posted below.
3/23/14:
First class meets 3/31/2014. Please read
Glossary of Patent and IP-Related Terms
and the Final Publication of the
Yoga Patent.
3/23/14: Welcome
to the course!
Syllabus
– Course Details
Lecture: Mon / Wed 12:30-1:45pm
in GIRV 2128
Instructor: Dr. Ilan Ben-Yaacov, ESB
room 2213, ext 5295, ilan[at]engineering.ucsb.edu
Office Hours: Wed 9:45-11:45am 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: May
23, 2014
Speaker: Lisa Greenwald-Swire,
Principal in the Silicon Valley office of Fish & Richardson
Topic:
Trademarks and Branding
2. Date: June
2, 2014
Speaker: Kevin O’Connor,
CEO at FindTheBest.com
Topic:
Patent Assertion Entities, Software Patents, and Congressional Patent Reform
Handouts
Glossary of Patent and IP-Related Terms
Determination of Patent Inventorship
Patent Application Template (MS Word)
Class
Notes
Notes
1 Notes 6
Notes
2 Notes 7
Notes 3 Notes 8
Notes 4 Greenwald-Swire Trademarks Talk
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)
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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