February 16-18, 2012 | Philadelphia, PA

Intellectual Property/ PatentsUnleashing the Einstein in You!!

Presented by: IBM Corporation

Intellectual Property & Patents

• Want to be known eternally for an outstanding technological design? • This workshop will explore intellectual property concepts and the importance

of filing patents in the workplace. • We will discuss the life cycle of a patent: from idea to company approval to

USPTO acceptance to licensing. • Receive tips from some of IBM's leading patent authors and intellectual

property counsel.

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History of Innovation60 Years of World Class Research

History of Patent Leadership19 Consecutive Years of most US Patents

History of Technical DiversityProfile of A Black IBM Inventor

In 1985, Dr. Mark Dean, and his co-inventor created a microcomputer system with means for attaching peripherals like disk drives, video gear, microphones, speakers, and scanners. Dr. Dean holds three of IBM’s original nine PC patents.

• Holder of 20 patents

• First Black IBM Fellow 1996

• Black Engineer of the Year Award 1997

• National Inventors Hall of Fame in 1997.

• Currently, IBM VP & CTO of IBM Africa.

Patent #4528626

Today: IBM has 2 Black IBM Fellows and 9 Black IBM Distinguished Engineers

History of Technical DiversityToday’s IBM Panelists

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Agenda  Topic Speaker

1 Opening & IntroductionsDrew Valentine, VP, Human Resources

2 IP / Patent Concepts, Key TermsEustus Dwayne Nelson, Esq.Patent Attorney

3 From Idea to ApplicationPascal Nsame, Inventor

4 USPTO Filing processDr. Ruthie Lyle, Inventor, USPTO Patent Agent

5 Infringement Analysis to LicensingStacy Brown, Patent Engineer

7 Q&A

Patents:Protect inventions that are new, useful, non-obvious.Owner has right to exclude others from making, using or selling patented invention for limited time, in exchange for disclosing invention to public.

Copyrights:Protect the particularexpression of an idea against copying(e.g., copyrights protect the expression - but not the function -of computer code). Protection is much narrower than for patents but term is much longer.

Trademarks:Identify the source of specific goods or services. Potentially very valuable: Provide customer recognition. Protection lasts as long as owner uses mark.

Trade secrets:Protect business or technical information forEconomic advantage.Protection lasts as long as secrecy is maintained.

Intellectual Property Primer

Patent Anatomy

• Front Page– Dates: Filing, Publication, Issue, Assignee, Author– Citations & Related Patent Data– Abstract

• Figures• Specification

– Defines terms used in the claims– Explains the figures– Describes the preferred and alternate embodiments (implementations)

• Claims– Define the invention– Rely on the specification to set the stage

Patent Draft Review Checklist

• Are the specification and claims easy to read? Easy to understand?

– Does the draft even remotely resemble your idea? If not, then it may take some work to recover.

• Are all of the possible ways to implement the idea present in the specification? Best preferred embodiments?

• Sexy title?• Draft provided in Word or equivalent? (graphics in PDF)

– Use Track Changes & Comment features when reviewing• Revisions provided with change bars so you can focus on just the changes?

– Or use BeyondCompare or some other document comparison tool• Did the attorney receive all of the post-disclosure comments (if applicable)?

Prior art documents?• Have you avoided hard-to-discover claim elements?

Infringement

• 35 U.S.C. § 271– “(a) Except as otherwise provided in this title,

whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

• Established by identifying one or more claims that violates this law

– All elements of your patent claim must be proven

IP Licensing – Roles & Responsibilities

• The goal for most Companies is to

– Enter into licensing agreements

– Use IP to help clients with enterprise development and business strategy

• Roles

– Engineering

– Business

– Legal

The Rewards of Creating IP / Patents

• You are named as an author of an invention

• Opportunity to grow advancement in technology

• Some companies give bonuses for the creation of IP

• Some companies give commission for each license agreement created using IP you authored

Useful Links

• www.ibm.com/ibm/licensing/ • www.uspto.gov• www.google.com/patents• http://www.delphion.com/