University of California, Santa Barbara
College of Engineering
Technology and Management Program
The
Art of Invention:
An Introduction to Patents and Intellectual Property
ENGR
291G / 251 Fall 2011
Instructor: Dr. Ilan Ben-Yaacov
Announcements
/ Assignments
11/3/11:
Information about the final project for the course can be found here.
11/3/11: In
class on Nov 16th, Dr. Craig Prater, Chief Technology Officer at Anasys Instruments, will be giving a guest lecture on
business/corporate IP strategies.
11/1/11: IMPORTANT: Roger Borovoy talk on IP litigation will be Friday, November 18,
from 3:30-5pm in Elings Hall Room 1601, click here for the official announcement. He will be available at the end of the talk
for members of our class to answer individual questions.
10/26/11:
Note set 5 is posted below or can be found here.
10/26/11:
Patent Application Template for MSWord is posted below or can be found here.
10/20/11:
Note set 4 is posted below or can be found here.
10/18/11:
Note set 3 is posted below or can be found here.
10/13/11: Make-up
class will be held Monday, Oct 17, in HSSB 1228 from 3:30-4:55pm.
10/13/11:
Note set 2 is posted below or can be found here.
09/29/11:
Note set 1 is posted below or can be found here.
09/28/11:
Please look over sample patent
disclosure form, inventorship document, and read the Yoga Patent Final Publication prior to
the second lecture.
09/22/11:
First class meets 9/28/11. Please read Glossary of Patent and IP-Related Terms
and briefly look over the Final
Publication of the Yoga Patent prior to the first lecture.
09/22/11: Welcome
to the course!
Syllabus
Course Details
Lecture: Wed 3:30-4:55pm in
PHELPS 1508
Instructor: Dr. Ilan Ben-Yaacov, ESB
room 3221D, ext 5295, ilan@engineering.ucsb.edu
Office Hours: Wed 11:30am-1:30pm in ESB Room
3221D
Course Description
This
2-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 1-2 guest lecturers (dates/times TBA).
In
addition to weekly lectures, there will be weekly reading 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 35%
by attendance and 65% by the final project
Handouts
Glossary
of Patent and IP-Related Terms
Determination
of Patent Inventorship
Sample
Patent Disclosure Form
Patent
Application Template (MS Word)
ALM
Article on Incorporation by Reference by Kim and Tse
Class
Notes
Notes 1 Notes from Craig Praters Lecture
Notes 2 Notes 6
Notes 3
Notes 4
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)
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 in
the ECE Department and in the College of Creative Studies Physics program at
UCSB, 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. 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
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