Cover
Title Page
Copyright
Dedication
About the Author
Preface
Acknowledgments
1 Introduction
1. 1.1 Introduction
2. 1.2 Patent
3. 1.3 Copyrights
4. 1.4 Trademarks
5. 1.5 Invention
6. 1.6 Defining the Processes of Invention
7. 1.7 Finding Invention in Your Work
8. 1.8 Invention Time
9. 1.9 From Invention to Productization
10. 1.10 Value of Patenting
11. 1.11 Example Patents
12. 1.12 Closing Comments and Summary
13. Problems
14. Case Studies
15. References
16. 1.A Appendix
2 Invention
1. 2.1 Introduction
2. 2.2 How to Become an Inventor
3. 2.3 Studying Inventors
4. 2.4 The Creative Cycle
5. 2.5 Left Brain and Right Brain
6. 2.6 Thinking Out of the Box
7. 2.7 Lateral Thinking Versus Critical Thinking
8. 2.8 Finding Invention Between the Boundaries of Disciplines
9. 2.9 Structured Invention – TRIZ
10. 2.10 Example Patents
11. 2.11 Closing Comments and Summary
12. Problems
13. Case Studies
14. References
15. 2.A Appendix
3 Patents and Patent Languages
1. 3.1 Introduction
2. 3.2 Patent Search Engines
3. 3.3 Patent Language
4. 3.4 Patent Language – Status and Operation
5. 3.5 Patent Draft
6. 3.6 Closing Comments and Summary
7. Problems
8. Case Studies
9. References
4 Patents
1. 4.1 Introduction
2. 4.2 Patent Types
3. 4.3 Patent Structure for Utility Patents
4. 4.4 Design Patents
5. 4.5 Plant Patents
6. 4.6 Example Patents
7. 4.7 Closing Comments and Summary
8. Problems
9. Case Studies
10. References
11. 4.A Appendix
5 Patent Drawings
1. 5.1 Introduction
2. 5.2 Patent Drawings – Utility Patents
3. 5.3 Patent Drawings – Structures
4. 5.4 Patent Drawings – Apparatus
5. 5.5 Patent Drawings – Circuit
6. 5.6 Patent Drawings – Systems
7. 5.7 Patent Drawings – Method
8. 5.8 Patent Drawings – Design
9. 5.9 Patent Drawings – Plant Drawings
10. 5.10 Unique Patent Drawings – Beauregard Claims
11. 5.11 Patent Drawings and Office Actions
12. 5.12 Example Patents
13. 5.13 Closing Comments and Summary
14. Problems
15. Case Studies
16. References
17. 5.A Appendix
6 Claims
1. 6.1 Introduction
2. 6.2 Independent and Dependent Claims
3. 6.3 Structure Claims
4. 6.4 Apparatus Claims
5. 6.5 Method Claims
6. 6.6 Hybrid Claims
7. 6.7 Means Plus Function Claims
8. 6.8 Beauregard Claims
9. 6.9 Exhaustive Combination Claims
10. 6.10 Alternative Claims
11. 6.11 Closing Comments and Summary
12. Problems
13. Case Studies
14. References
7 Office Actions
1. 7.1 Introduction
2. 7.2 Office Actions – USPTO
3. 7.3 Disposition of Claims
4. 7.4 Application Papers
5. 7.5 Detailed Action
6. 7.6 Writing the Office Action Response
7. 7.7 Preliminary Amendment
8. 7.8 Final Office Action
9. 7.9 European Office Action
10. 7.10 German Patent and Trademark Office (DPMA) Office Action
11. 7.11 Supporting European Law Firms and EU Response
12. 7.12 Closing Comments and Summary
13. Problems
14. Case Studies
15. References
8 Invention Generation Methodologies
1. 8.1 Introduction
2. 8.2 Creative Problem‐Solving (CPS) Sessions
3. 8.3 Systematic Thinking
4. 8.4 Systematic Inventive Thinking (SIT)
5. 8.5 Unified Systematic Inventive Thinking (USIT)
6. 8.6 Data Mining
7. 8.7 Anticipating the Next Invention
8. 8.8 Closing Comments and Summary
9. Problems
10. Case Studies
11. References
9 Corporate Patent Strategy
1. 9.1 Introduction
2. 9.2 Review Committee System
3. 9.3 Database Patent Tracking System – World Patent Tracking System (WPTS)
4. 9.4 Documenting the Invention Ideas and Disclosures
5. 9.5 Submission of the Invention Disclosure
6. 9.6 Invention Review and Evaluation
7. 9.7 Review Committee
8. 9.8 Working with the Patent Attorney
9. 9.9 Corporate Intellectual Property (IP) Strategy
10. 9.10 Incentives
11. 9.11 Closing Comments and Summary
12. Problems
13. Case Studies
14. References
10 Expert Witness
1. 10.1 Introduction
2. 10.2 Expert Witness
3. 10.3 Types of Expert Witnesses
4. 10.4 Working with Patent Attorney on Litigation
5. 10.5 Expert Witness Report
6. 10.6 Tactics
7. 10.7 Access to Materials in the Public Domain
8. 10.8 Access to Materials Not in the Public Domain
9. 10.9 Scientific Evidence
10. 10.10 Closing Comments and Summary
11. Problems
12. Case Studies
13. References
A Text for Invention Disclosure
B Text for Invention Disclosure Reviewer Form
C Text for Novelty Search Report
D USPTO Office Action Details of Contents
E USPTO Office Action Sections
F European Union (EU) Office Action
G European Union (EU) Office Action Response
H US to EU Attorney Letter – Office Action Response
I Petition for Submitting Color Photographs or Drawings
Patent Cooperation Treaty
K Certificate of Correction
L Corrected Notice of Allowance
M Notice of Allowance
N Preliminary Amendment
O Submission of Corrected Drawings
Glossary of Terms
Index
End User License Agreement

List of Illustrations

Chapter 1: Introduction
1. Figure 1.1 Intellectual property.
2. Figure 1.2 Patents.
3. Figure 1.3 Invention.
4. Figure 1.4 Inventor gains.
5. Figure 1.5 Corporation gains.
6. Figure 1.A.1 US Patent No. 5,384,474.
7. Figure 1.A.2 US Patent No. 5,521,115.
Chapter 2: Invention
1. Figure 2.1 Creative processes.
2. Figure 2.2 Thought processes.
3. Figure 2.3 Timing.
4. Figure 2.4 Studying inventors.
5. Figure 2.5 The creative cycle.
6. Figure 2.6 Thinking out of the box.
7. Figure 2.7 Finding invention in the boundaries.
8. Figure 2.A.1 US Patent 5,710,682.
9. Figure 2.A.2 US Patent No. 5,521,115.
Chapter 3: Patents and Patent Languages
1. Figure 3.1 Patent searches.
2. Figure 3.2 Patent application types.
3. Figure 3.3 Patent structure.
Chapter 4: Patents
1. Figure 4.1 Patent types.
2. Figure 4.2 Utility patent.
3. Figure 4.3 Utility patent structure.
4. Figure 4.4 Design patent description.
5. Figure 4.5 Design patent claims.
6. Figure 4.6 Plant patent structure.
7. Figure 4.7 Botanical description.
8. Figure 4.8 Botanical characteristics.
9. Figure 4.9 Example claim of the first plant patent USPP1.
10. Figure 4.10 Example of a plant abstract.
11. Figure 4.A.1
12. Figure 4.A.2
13. Figure 4.A.3
Chapter 5: Patent Drawings
1. Figure 5.1 Utility patents.
2. Figure 5.2 Structure drawing.
3. Figure 5.3 Apparatus drawing.
4. Figure 5.4 Circuit drawing – high‐level drawing.
5. Figure 5.5 Circuit drawing – component level.
6. Figure 5.6 System‐level drawing.
7. Figure 5.7 Method drawing.
8. Figure 5.8 (a) Design drawing – bottom front perspective view. (b) Design drawing – front view perspective. (c) Design drawing – top view and bottom view. (d) Design drawing – left side and right side.
9. Figure 5.9 Plant drawing.
10. Figure 5.10 Plant photograph.
11. Figure 5.11 Beauregard claim drawing.
12. Figure 5.A.1
13. Figure 5.A.2
14. Figure 5.A.3
Chapter 6: Claims
1. Figure 6.1 Dependent and independent claims.
2. Figure 6.2 Dependent and independent claims logic tree.
3. Figure 6.3 Structure, apparatus, and method claims.
4. Figure 6.4 Alternative types of claims.
Chapter 7: Office Actions
1. Figure 7.1 Office Action and USPTO.
2. Figure 7.2 Contents of a USPTO Office Action.
3. Figure 7.3 Disposition of claims.
4. Figure 7.4 Common USPTO claim rejection.
5. Figure 7.5 Writing the Office Action response.
6. Figure 7.6 Phrases in the preamble.
7. Figure 7.7 European Union patent examiner ruling.
Chapter 8: Invention Generation Methodologies
1. Figure 8.1 Creative problem‐solving (CPS) session.
2. Figure 8.2 CPS session attendees.
3. Figure 8.3 CPS session rules.
4. Figure 8.4 TRIZ evolution.
5. Figure 8.5 Systematic inventive thinking (SIT) methods.
Chapter 9: Corporate Patent Strategy
1. Figure 9.1 Patent tracking system.
2. Figure 9.2 Invention disclosure.
3. Figure 9.3 Invention disclosure review document.
4. Figure 9.4 Corporate IP strategy.
5. Figure 9.5 Corporate IP targets.
6. Figure 9.6 Incentive systems.
Chapter 10: Expert Witness
1. Figure 10.1 Types of witnesses.
2. Figure 10.2 Invalidity contentions.
3. Figure 10.3 Access to materials in public domain.
4. Figure 10.4 Access to materials not in public domain.

This edition first published 2018

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Library of Congress Cataloging‐in‐Publication Data

Names: Voldman, Steven H., author.

Title: From invention to patent : a scientist and engineer’s guide / by Dr. Steven H. Voldman.

Description: Hoboken, NJ : John Wiley & Sons, 2018. | Includes bibliographical references and index. |

Identifiers: LCCN 2018001066 (print) | LCCN 2018007340 (ebook) | ISBN 9781119125266 (pdf) | ISBN 9781119125273 (epub) | ISBN 9781119125259 (cloth)

Subjects: LCSH: Patent laws and legislation–United States. | Patent practice–United States.

Classification: LCC KF3114 (ebook) | LCC KF3114 .V65 2018 (print) | DDC 346.7304/86–dc23

LC record available at https://lccn.loc.gov/2018001066

Cover design by Wiley

Cover images: © wonlopcolors/Shutterstock;

Dr Steven H. Voldman is the first IEEE Fellow in the field of electrostatic discharge (ESD) for “Contributions in ESD protection in CMOS, Silicon On Insulator and Silicon Germanium Technology.” He received his B.S. in Engineering Science from University of Buffalo (1979); a first M.S. EE (1981) from Massachusetts Institute of Technology (MIT); a second degree EE Degree (Engineer Degree) from MIT; a MS Engineering Physics (1986), and a PhD in electrical engineering (EE) (1991) from University of Vermont under IBM's Resident Study Fellow program.

Voldman was a member of the semiconductor development of IBM for 25 years from 1982 to 2007. He was also a member of the development team of Qimonda and Intersil Corporations. He was a consultant for Taiwan Semiconductor Manufacturing Corporation (TSMC) in Hsinchu, Taiwan, and for the Samsung Electronics Corporation in Dongtan, South Korea.

Steve Voldman was one of the first to be designated as an IBM Master Inventor. Dr Steven H. Voldman was also awarded the title of IBM Top Inventor for three consecutive years for being one of the top 10 inventors in the IBM Corporation. He is presently a recipient of 260 issued US patents and has written more than 150 technical papers. At IBM, Dr Voldman achieved over 67 IBM Invention Achievement Award plateaus.

Steven H. Voldman provides tutorials and lectures on inventions, innovations, and patents in Malaysia, Sri Lanka, Senegal, Swaziland, Benin, and the United States. He initiated a lecture program to provide lectures and interaction to university faculty and students internationally, and has lectured to over 45 universities in the United States, Korea, Singapore, Taiwan, Malaysia, Philippines, Thailand, India, China, Senegal, Benin, and Swaziland.

Since 2007, he has served as an expert witness in patent litigation and has also founded a limited liability corporation (LLC) consulting business supporting patents, patent writing, and patent litigation. In his LLC, Voldman served as an expert witness for cases on DRAM development, semiconductor development, integrated circuits, and electrostatic discharge in over 10 cases. He was an expert witness for Hogan Lovells LLP, Dechert LLP, Quinn Emanuel Urquhart and Sullivan LLP, Sydney and Austin LLP, and Latham and Watkins LLP.

Dr Voldman is presently working on patent searches, patent drafting, office actions response, and preliminary amendments. He is presently writing patents for law firms in the United States. He provides consultation on patents, patent drafting, and patent portfolio development for small corporations in the United States.

Dr Voldman also has written for Scientific American and is an author of 10 books on technology.

Preface

Invention and patents continue to be an important issue in technology and a factor driving our global economy. The Internet of Things (IoT) continues to grow, as well as the Internet of Everything (IoE). In the future, inventions and patents will drive the global economy and trade. The future will witness a flourish of the field of electronics, medicine, energy, transportation, and other areas. At present, the entire world is competing or desires to compete within the same areas of interest.

In today’s work environment, there is a higher expectation that scientists and engineers not only do their work but also innovate. In early years, companies or governments did not expect innovations.

In the early 1980s, the expectation within the IBM Corporation was that an engineer or scientist would produce one patent in their 30‐year career. Why? Because that was the level of what an average employee produced! After the 1990s, the expectation started to change. Individual and organizational goals were established with annual expectations. Attitudes about innovation and patents changed for an average employee.

From Invention to Patent: A Scientist and Engineer’s Guide provides a clear picture of how to be a prolific inventor, understanding patents and the patent process. It provides illuminating insights into the writing of invention disclosures to patents from the submission process to final drafts. The book will teach you how to communicate effectively with patent lawyers and patent examiners, teaching the language of “legalese.” The book is unique in covering both the early invention process and final patent drafting to provide high‐quality patents in technologies.

This text consists of multiple goals, which are discussed in what follows.

The first goal of the text is to teach the reader how to become an inventor and what invention is. The first step is to stimulate the reader to start inventing. This will require some suggestions about acquiring the confidence to proceed as an inventor. Additionally, the concept of what invention is and what defines invention. Secondly, one needs to prepare to be an inventor.

The second goal of the text is how to do patent searches. Today, there are many search engines that can be used to study patents and provide patent searches. The text will point out the pros and cons of different search engines.

The third goal of the text is to teach the patent structure. It is important to understand the requirement of the patent offices.

The fourth goal is explaining how to draft a patent. In order to draft a patent, the format, the text, and the figures have specific requirements.

The fifth goal is to teach the terms and language of patents. In order to communicate with the patent attorney, it is helpful to understand the language used in patent law.

The sixth goal is how to understand and write a response to the patent office. To understand how to respond to the patent office is important for the process of invention.

And, the last goal is how to become a prolific inventor. How does one go from writing his first patent or invention disclosure to many patents?

This book, From Invention to Patent: A Scientist and Engineer’s Guide, is organized as follows:

In Chapter 1, the foundation for discussion of invention and patents is laid out for the rest of the text. The first chapter addresses basics of patents, copyrights, and trademarks as an introduction. Examples of patents, copyrights, and trademarks that influence today’s society are discussed. Examples will be drawn from IBM, Apple, Intel, Samsung and Levi Strauss. Modern examples such as laptops and cell phones are used. These examples provide relevance to modern‐day life. The primary focus is on the electronic industry and software engineers. The secondary focus is on biotechnologists, biologists, chemistry, and pharmaceutical groups.

Chapter 2 addresses how to become an inventor and the process of becoming a prolific inventor. Examples on how well‐known inventors worked and how they displayed themselves as both creative and prolific are included. Individuals from Edison to Steve Jobs are discussed. Examples from the course “Inventing, Innovating, and Patenting” in Sri Lanka and Penang Malaysia are given.

In Chapter 3, patent search engines and the language of patents are discussed. In order to understand the process, it is important to understand the patent language. Patent offices, patent search engines, patent examination, and patent books and courses are discussed.

Chapter 4 addresses how to write patents. Different patent applications are offered by the patent offices globally. In the UnitedStates Patent and Trademark Office (USPTO), three types of patents are offered: utility patents, design patents, and plant patents, which are discussed in the chapter, by highlighting the distinctions between those patent types.

Chapter 5 focuses on patent drawings. Examples of different types of drawings are shown. Utility drawings, design, and plant drawings are shown as examples. The rules and requirements of drawings are discussed with regards to how they relate to the specification and the claims.

Chapter 6 addresses patent claims. This chapter discusses different types of claims, as well how to write independent and dependent claims and also utility claims, design claims, and plant claims.

Chapter 7 addresses the subject of Office Actions and the response. The chapter first discusses the Office Action (OA) from the USPTO. Understanding how to read the Office Action from the patent examiner and how to write a response is the key to the invention process. The chapter also focuses on the basics of how to write a USPTO OA response. The chapter also discusses the European Union (EU) Office Action and how this differs from the USPTO OA.

Chapter 8 discusses different methods used by corporations to generate patents. A practice used by some corporations to generate patents is known as the creative problem‐solving (CPS) sessions. CPS sessions are discussed extensively to demonstrate how to use them for patent generation, corporate goals, and training ground for training new inventors. The rules of the CPS session and process are shown. Utilization of the CPS session method was integrated into parts of invention courses in Malaysia and Sri Lanka. A second practice is the use of systematic inventive thinking methods known as TRIZ, SIT, and USIT.

Chapter 9 addresses corporate invention strategies. Examples of corporate patent strategies, software systems, invention disclosures, and incentives are provided. The patent process inside a large corporation is discussed. Specifics on the software system, tracking systems and goals and incentives are highlighted. Examples of corporate strategies such as IBM, TSMC, and Samsung are discussed. Additionally, AT&T and Intel are reviewed. Examples and templates of invention submission are provided in the appendices.

Chapter 10 addresses being an expert witness. In this chapter, different types of expert witnesses are discussed. The chapter opens discussions on patent litigation practices.

This introductory text will hopefully open your interest in the field of invention and writing patents.

Enjoy the text and enjoy beginning the journey of inventing, innovating, and patenting.

Baruch HaShem B”H

Dr Steven H. Voldman

IEEE Fellow

Acknowledgments

I am thankful for the years of support and the opportunity to provide lectures, invited talks, and tutorials on invention and writing patents.

I would like to thank the IBM Intellectual Property Law Department in Burlington, Vermont, for teaching me patent drafting, invention disclosures, and claim writing.

I would like to thank Jerry Walters, Richard Kotulak, James Leas, and Mark Chadurjian, as well as the staff working with me on the 258 issued patents, as well as for the award from IBM Intellectual Property Law Department in August 2007, the “Better Mouse Trap Award” with citation “In Appreciation of 25 years of Helping IBM Create The Better Mouse Trap.”

I would like to thank IBM Corporation for allowing me to lecture on constructing a creativity and patenting course. My first course was constructed as a request by a manager who wanted to increase the productivity of his IBM team of 60 employees to submit more inventions.

I would like to thank Dreamcatcher Malaysia and Dreamcatcher Asia for launching the first external course in 2007; this was taught from 2007 to 2014. Government of Malaysia desired to increase its number of patents and knowledge of patent drafting. It was an honor for me to present the course to the staff of the Ministry of Science Technology and Innovation (MOSTI) Malaysia with the Prime Minister of Malaysia in Putrajaya in 2008. Additionally, creativity and invention courses were taught for Intel U (Malaysia), Institut Farmaseukital Dan within Universiti Sains Malaysia (USM), and other Malaysian corporations and institutions. Providing lectures to chemists, biotechnologists, and agriculture specialists enhanced my understanding of plant patents.

I would like to thank Shanta Yapa of EPIC Lanka (Sri Lanka). It was an honor for me to offer a first course on invention called “Inventing, Innovating, and Patenting” for the Federation of Information Technology Industry Sri Lanka (FITIS). This was followed by a more advanced course focusing on writing patents. The FITIS attendees were primarily software engineers, which allowed us to focus on software and system patents. This course was taught annually from 2008 to 2015. In Sri Lanka, it was suggested to write a book based on the patenting courses. It was a pleasure to travel to Sri Lanka every year.

I would like to thank Stephen Ackerman of Saile Ackerman LLC for allowing me to learn the fine details in patent searching, patent drafting, and office action response writing.

I thank the law firms Dechert LLP, Hogan Lovells LLP, Quinn Emanuel Urquhart and Sullivan LLP, Thompson and Knight LLP, and, lastly, Akin Gump, Strauss, Hauer and Feld LLP for providing me an opportunity to serve as an expert witness and consultant for them.

I would like to thank the corporations of IBM Corporation, Qimonda, Taiwan Semiconductor Manufacturing Corporation (TSMC), Intersil Corporation, and Samsung Electronics Corporation to work as a member of the technology team. I was fortunate to work in a wide number of technology teams and with a wide span of customers and very fortunate to be a member of talented technology and design teams that were innovative, intelligent, and inventive. Working with the development teams of IBM Burlington stimulated my interest in invention.

I would like to thank the institutions that allowed me to teach and lecture at conferences, symposiums, industries, and universities; this motivated me to develop the texts. I would like to thank faculty at the following universities: MIT, Stanford University, University of Central Florida (UCF), University of Illinois Urbana‐Champaign (UIUC), University of California Riverside (UCR), University of Buffalo, National Chiao Tung University (NCTU), Tsinghua University, National Technical University of Science and Technology (NTUST), National University of Singapore (NUS), Nanyang Technological University (NTU), Beijing University, Fudan University, Shanghai Jiao Tung University, Zhejiang University, Huazhong University of Science and Technology (HUST), UESTC, Korea University, Universiti Sains Malaysia (USM), Universiti Putra Malaysia (UPM), Kolej Damansara Utama (KDU), Chulalongkorn University, Mahanakorn University, Kasetsart University, Thammasat University, and Mapua Institute of Technology (MIT).

I would like to thank universities in Africa which allowed me to teach the invention course. A special thanks to University Cheikh Anta Diop in Dakar, Senegal, Limkokwing University of Creative Technology, in Mbabane, Swaziland, CERCO Group and Universite Abomey‐Calavi in Cotonou, Benin.

I would also like to thank John Wiley and Sons and staff for the approval to publish this book.

To my children, Aaron Samuel Voldman and Rachel Pesha Voldman, good luck to both of you in the future.

To Betsy H. Brown, for her support during the writing of this text.

And to my parents, Carl and Blossom Voldman.

B”H

Dr Steven H. Voldman

IEEE Fellow

A Scientist and Engineer's Guide