New Short Course SC326 Patent Fundamentals

Sunday, March 22, 2009
9:00 a.m.–1:00 p.m.
Mohammed N. Islam; Optics and Photonics and Solid State Electronics Lab, Dept. of Electrical Engineering and Computer Science, Univ. of Michigan, USA
Level: Advanced Beginner (basic understanding of topic is necessary to follow course material)

Course Description

This Short Course covers the fundaments of U.S. Patents and is geared for engineers or scientists in industry or academia. The first part of the course focuses on the rules and codes that govern patent prosecution in the United States. For example, the instructor highlights key parts of the Manual of Patent Examining Procedure (MPEP), with a special emphasis on examination of patents and patentability of applications. Although there are many rules and regulations related to patenting, the most important sections boil down to four rules: 101 (patentable subject matter), 102 (prior art), 103 (obviousness) and 112 (specification and claim writing rules). The second part of the course focuses on the strategies and methodology for claim drafting and patent prosecution. Since it is important to write a patent with the opponent in mind, some time is also spent on examining litigation issues and common techniques used to overturn patents. In addition to examining claims for simple inventions, a tour will be taken of office actions, amendment writing and responding to office actions.

The goal of this course is to enable students to write the lead independent claim for their invention. The best claim is one that not only covers the particulars of the invention, but one that encompasses all the way up to the border of the prior art without reading on prior art. Also, students from the course will gain an appreciation for patenting strategy for a large company versus a start-up, and they will understand that patents are a right to exclude, not a right to practice.

Benefits and Learning Objectives

This course should enable you to:

  • Determine if the invention is novel and non-obvious, permitting a patent to be filed.
  • Decide whether an invention should be patented or protected as a trade secret.
  • Understand how to write the lead claim for an invention.
  • Succinctly communicate details of an invention with patent attorneys or agents.
  • Appreciate how the examiner of a patent in the USPTO is judging the application.
  • Develop patent strategy in a start-up, in a large corporation or as an individual.
  • Understand some of the common patent terminology, such as patent pending, continuation, divisional, continuation-in-part and PCTs.
  • Understand differences between patent prosecution, litigation and licensing.

Intended Audience

This course is intended for technologists, inventors and managers who need to understand the role of the patent system in protecting intellectual property, especially those who need to develop a patent strategy to protect their products and bring in investments.

Biography

Mohammed N. Islam is a registered U.S. patent agent and a professor of electrical engineering at the University of Michigan. He received bachelor’s, master’s and doctorate degrees from MIT. He has published more than 120 papers and holds over 125 patents or patents pending. Islam was a Fannie and John Hertz Fellow and is a Fellow of OSA and IEEE. He was the first recipient of the Distinguished University Innovator Award for developing and commercializing breakthrough technology. Other awards include the OSA Adolf Lomb Medal, a University of Michigan Research Excellence Award and the Texas eComm Ten Award.