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Writing Chemistry Patents and Intellectual Propert y: A Practical Guide

Writing Chemistry Patents and Intellectual Propert y: A Practical Guide


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About the Book

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 Offi ce / 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. 2004/0010115A1 / 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 Confi dentiality 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 2004/0010115A1 / 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)


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Product Details
  • ISBN-13: 9781118084441
  • Publisher: John Wiley & Sons Inc
  • Publisher Imprint: John Wiley & Sons Inc
  • Height: 250 mm
  • No of Pages: 320
  • Weight: 666 gr
  • ISBN-10: 1118084446
  • Publisher Date: 18 Jul 2011
  • Binding: Other digital
  • Language: English
  • Spine Width: 15 mm
  • Width: 150 mm


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