Writing Chemistry Patents and Intellectual Property: A Practical Guide

Understanding intellectual property, safeguarding your ideas Intellectual property is constantly at risk, and the protection of chemical science and technology through the patenting process allows individuals and companies to protect their hard work. But in order to truly be able to protect your ideas, you need to understand the basics of patenting for yourself. A practical handbook designed to empower inventors like you to write your own patent application drafts in conjunction with an attorney, Writing Chemistry Patents and Intellectual Property: A Practical Guide presents a brand new methodology for success. Based on a short course author Francis J. Waller gives for the American Chemical Society, the book teaches you how to structure a literature search, to educate the patent examiner on your work, to prepare an application that can be easily duplicated, and to understand what goes on behind the scenes during the patent examiner's rejection process. Providing essential insights, invaluable strategies, and applicable, real-world examples designed to maximize the chances that a patent will be accepted by the United States Patent and Trademark Office, Writing Chemistry Patents and Intellectual Property is the book you need if you want to keep your work protected.

Table of Contents:
PREFACE xiv ACKNOWLEDGMENTS xvii 1. BACKGROUND AND HISTORICAL PERSPECTIVE ABOUT INTELLECTUAL PROPERTY 1 Chapter Objective 1 Introduction 1 Book Strategy for Patents 6 A Brief History of Patenting 7 Intellectual Property: Is It Important or Not?  8 The U.S. Patent and Trademark Office 9 Why Intellectual Property Protection Is Currently Important 13 Information Overload and Prior Art 15 China as an Emerging Intellectual Powerhouse 18 Patents as Sources of Technology 19 Patents in Force Worldwide 20 Chapter Summary 20 Additional Reading 20 Question 21 2. BRIEF INTRODUCTION TO VOCABULARY AND DEFINITIONS 22 Chapter Objective 22 Introduction 22 Short Story from Panama 23 Patent Terminology 24 Trade Secret Definition 30 Copyright 31 Trademark Definition 32 Chapter Summary 33 Additional Reading 33 Questions 34 3. YOUR FIRST DECISION: TRADE SECRET OR PATENT? 35 Chapter Objective 35 Introduction 35 Trade Secret 36 Patent 39 Comparison between a Trade Secret and a Patent 40 Chapter Summary 41 Additional Reading 41 Question 42 4. WHAT COMES FIRST: A PROVISIONAL OR NONPROVISIONAL PATENT APPLICATION? 43 Chapter Objective 43 Introduction 43 Provisional Patent Application 45 Nonprovisional Patent Application 48 Patent Application Comparison 49 Chapter Summary 50 Additional Reading 50 Question 50 5. REASONS FOR PATENT OFFICE REJECTIONS 51 Chapter Objective 51 Introduction 51 Patentable Invention and Its Usefulness 52 Novelty 53 Nonobviousness 54 Other Reasons for a Rejection 56 Chapter Summary 57 Additional Reading 57 Question 58 6. REASONS FOR INVALID PATENTS 59 Chapter Objective 59 Introduction 59 Experiments: Actual or by Insight 60 Prior Art Disclosure 60 Issued Patent Is Invalid 61 Inequitable Conduct 62 Other Considerations When Writing Your First Patent Application 62 Another Point of View 63 Chapter Summary 63 Additional Reading 64 Question 64 7. EXAMPLES OF PATENT SPECIFICATIONS 65 Chapter Objective 65 Introduction 65 Key to Patenting Success 66 Why Understanding Patents Is Important 66 Typical Pathway for Patent Application within a Company 67 Claim 1 and 2 of U.S. Patent 5,247,190 68 Examination of U.S. Patent 5,872,289 71 Format for Patent with Federal Support 76 Examination of U.S. Patent 6,369,239 77 Examination of U.S. 20040010115A1 79 Examination of U.S. Patent 7,071,289 81 Examination of U.S. Patent 5,273,995 82 Examination of U.S. Patent 7,253,209 83 Comparing Claim Language with Written Description of Invention 85 Chapter Summary 87 Additional Reading 88 Questions 88 8. WRITING THE PATENT APPLICATION 89 Chapter Objective 89 Introduction 89 The Inventive Process 90 Summary of Our Understanding for Patents and Trade Secrets 92 Identifying a Problem to Be Solved 93 Methodology to Solve a Complex Problem 97 Possible Inventions from Our Everyday Reading 101 Patentability Requirements 102 Circumventing the Rules of Electrophilic Aromatic Substitution 103 Water Splitting via Ruthenium Complex 105 Detecting Mechanical Stress within a Polymer 108 Places to Find Future Problems 110 Controlling Molecular Size of Semiconductor Quantum Dots 111 Chapter Summary 113 Additional Reading 113 Question 114 9. AN EXAMINATION OF CLAIM FORMAT 115 Chapter Objective 115 Introduction 115 Interpretation of Claims 116 General Background about Claim Language 118 More Definition about Claims 119 Specific Claim Language 120 Chapter Summary 123 10. WHY YOU NEED CONFIDENTIALITY AGREEMENTS 124 Chapter Objective 124 Introduction 124 Confidentiality Agreements in General 125 Important Elements within a Confidentiality Agreement 125 Chapter Summary 127 Question 127 11. PRACTICAL INFORMATION ABOUT COPYRIGHTS AND TRADEMARKS 128 Chapter Objective 128 Introduction 128 Copyright 129 Copyright Interpretation 131 Adjunct Professor Appointments and the Copyright 133 Filing for a Copyright 136 Trademarks 137 Chapter Summary 139 Question 140 12. GLOBAL PATENT FILING AND PATENTING STRATEGY 141 Chapter Objective 141 Introduction 141 Developing a Patent Strategy 142 International Patent Filing 143 Filing Options 145 Chapter Summary 146 Questions 147 13. WHAT ACADEMIC SCIENCE FACULTY SHOULD KNOW ABOUT PATENTS AND COPYRIGHTS 148 Chapter Objective 148 Introduction 148 Recent Background 149 What Should You Do after Having a Novel Concept? 150 Notebooks 151 Invention Disclosure 152 Confidentiality Agreements 153 Copyrights 153 Chapter Summary 154 Additional Reading 154 Questions 154 14. INTELLECTUAL PROPERTY RESOURCES 155 Chapter Objective 155 Introduction 155 Brief Summary of Selected Intellectual Property Books 156 Intellectual Property Courses 162 Worldwide Patent Offices 163 Emerging Technology Fields 163 Useful Organization 164 Chapter Summary 165 Additional Reading 165 15. BOOK SUMMARY AND ON YOUR OWN 166 Chapter Objective 166 Introduction 166 Pending Intellectual Property Developments 167 Summary of Previous Chapters 167 Responsibilities of the Inventor 168 Conclusions 169 Chapter Summary 170 Additional Reading 170 16. RESPONSES TO QUESTIONS AT END OF CHAPTERS 171 Chapter Objective 171 Chapter 1 171 Chapter 2 172 Chapter 3 173 Chapter 4 173 Chapter 5 174 Chapter 6 176 Chapter 7 177 Chapter 8 178 Chapter 10 178 Chapter 11 179 Chapter 12 179 Chapter 13 180 17. PATENT APPENDIX 181 Chapter Objective 181 Useful Information Besides the Invention 181 Chapter Summary 184 U.S. Patent 5,872,289 185 U.S. Patent 6,369,239 194 U.S. Published Patent Application 20040010115A1 198 U.S. Patent 7,071,289 with Certificate of Correction 207 U.S. Patent 5,273,995 219 U.S. Patent 7,253,209 229 INDEX 236

About the Author :
FRANCIS J. WALLER, PhD, is a former senior research associate with Air Products and Chemicals, Inc. with more than thirty-five years of experience in industry and teaching. Dr. Waller is the author or coauthor of forty-six U.S. patents and received the Paul Rylander Award from the Organic Reactions Catalysis Society in 2001.

Review :
"With this book, the author has made a good attempt to present this information in an unfussy way and with an obvious relevance to a working chemist." (Chemistry World, 2012)