Abstract
This chapter begins by explaining the process of patenting and the structure of patents, the oldest standardized format for capturing technological knowledge. We review some historical patents, examples of patent litigation, as well as recent trends in intellectual property (IP) management. While many inventors patent their technologies, some choose other forms of protection such as keeping trade secrets. Recent trends in intellectual property management show rapid increases in the number of patents filed worldwide, but also the importance of protecting (or sharing) technological knowledge through other means. This chapter underlines the need for technology-based firms to develop a comprehensive IP strategy, including the emergence of technology licensing offices (TLOs) at research-intensive universities. Understanding both expired as well as recently filed patents, and how they build on earlier inventions, is an important input for technology roadmapping.
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Notes
- 1.
Practically this means, for example, that if an individual or company in a country in Europe or Asia “infringes” on a U.S. patent whose underlying invention is not also patented in Europe or Asia, that this act does not represent infringement in the legal sense and that it cannot be enforced. This is true, as long as said “copied” products or processes are not sold in the United States.
- 2.
One of the reasons for this is that a specific patent may rely on another preceding more general patent owned by a different owner and in order to exercise the later specific patent, a license from the original (underlying) patent owner may be required. This obligation to obtain license from the earlier patent disappears, however, once the earlier more general patent has expired.
- 3.
- 4.
This is an interesting point. Typically, it is not possible to simply take something observed in nature (e.g., plants or naturally occurring DNA sequences) and obtain a patent for it, since no “inventive” step was required. However, it is possible to obtain patents on plant varieties that have been generated through breeding as well as more recently, genetic modification, see Chap. 3.
- 5.
An example of a patent related to specific spacecraft orbits around planet Earth is as follows: Castiel, David, John E. Draim, and Jay Brosius. “Elliptical orbit satellite, system, and deployment with controllable coverage characteristics.” U.S. Patent 5,669,585, issued September 23, 1997.
- 6.
Some famous patent examiners (so-called patent clerks) were Thomas Jefferson, the third president of the United States, Alrich Altshuller, the inventor of the TRIZ method in the Soviet Union, as well as Albert Einstein who worked for the Swiss Patent Office from 1902 to 1909, including the “annus mirabilis” of 1905, see below.
- 7.
As stated earlier there is no such thing as a “global patent,” but there are international agreements and processes that aim at harmonizing patent processes – such as the minimum duration of a patent’s lifetime – among different countries.
- 8.
According to the American Intellectual Property Law Association, the cost of an average patent lawsuit, where one million dollars to $25 million is at risk, is $1.6 million through the end of discovery, and $2.8 million through final disposition (2013), Source: https://www.ipwatchdog.com/2013/02/05/managing-costs-of-patent-litigation
- 9.
The company in that case owns the patent rights since the inventors were paid to make the invention as part of their job duties and all costs associated with it were carried by the firm. Many companies incentivize their employees to file patents by awarding them a one-time fee or better a recurring bonus based on the cash flows generated by the patent.
- 10.
The first US patent was awarded on July 31, 1790, to Samuel Hopkins for a new way to make potash, a fertilizer ingredient containing potassium, for example, K2CO3, which is typically derived from mined salts. The purpose of fertilizers is to increase yields in agriculture. Feeding a growing nation was the main problem being addressed by this patent in the late eighteenth century. Source: https://www.uspto.gov/about-us/news-updates/first-us-patent-issued-today-1790
- 11.
The state of the art (SOA) is different from the state of practice. The latter encapsulates the average or typical way how a particular problem is solved in society by a majority of people or entities at a certain moment in time, while the former captures the best possible solution which may not have been widely diffused into society yet, see Chap. 7.
- 12.
Most patent diagrams used to be, and are still today, drawn by hand. This is somewhat of a tradition and has even given rise to the notion of “patent art,” which are beautifully framed specimens of diagrams contained in famous historical patents. Increasingly, patent diagrams are computer generated, a trend which started in the twentieth century and continues to this day.
- 13.
This goal is of course aspirational, since actually replicating the invention independently may require specialized knowledge and equipment (e.g., a semiconductor fabrication facility) that may not be easily available once the patent expires and becomes available for broader use. Replicating the underlying technology is difficult for new and disruptive technologies.
- 14.
In the vernacular of patent law, the individually listed and numbered claims in a patent are referred to as the “integers” of the patent. This is because the first level of indentation of the patent claims, that is, 1., 2., 3. (as opposed to say 1.2.3) refer to the primary or base claims. Some patents contain over 100 claims, even though the average is lower. The European Patent Office (EPO) reported in 2019 that the average number of claims per patent was 14.7.
- 15.
This relates to the topic of Chap. 3, where we discussed “nature as technology.”
- 16.
Patent numbers are issued sequentially and it took about 100 years from 1790 to 1894 to arrive at half a million U.S. patents. This is roughly the number of patents issued today in a single year.
- 17.
Note that important objects are highlighted in bold, while key processes and attributes or states are underlined.
- 18.
We already introduced OPM in Chap. 1, and it can also be found as ISO Standard 19,450 (2015). There is currently no formal requirement for systems modeling of patents.
- 19.
There is an ongoing debate about which type of animal traps are “humane” (an ironic term) to use and whether it is better to use traps that only catch animals while leaving them alive (technology type L5) versus technologies that kill the animal instantly (technology type L1). This patent does not address this particular question, even though in practice most of the time smaller rodents such as mice are killed by such traps.
- 20.
This is a tricky operation as all those can attest to who have accidentally had their fingers pinched by an accidental release of a mousetrap (author included).
- 21.
Claims 2 and 3 of U.S. patent 528,671 are for slightly different variants of the animal trap.
- 22.
This was probably of little concern to the inventors since the difference would be a very small fraction of a second, since light travels in vacuum at about 300,000 [km/s].
- 23.
In 2000 the institution was renamed the United States Patent and Trademark Office (USPTO) with its headquarters in Alexandria, Virginia.
- 24.
It is important to note that WIPO does not award patents, since these are only issued by national (territorial) patent offices. WIPO plays an international coordination role.
- 25.
Provisional patent applications are recognized by the Paris Convention and are sufficient to establish a priority date with the WIPO.
- 26.
- 27.
Anyone can search for keywords or patents over the Internet today and discover patents related to an invention. However, the specific use of keyword combinations, date ranges, and country-specific databases requires both training and experience. It is important to note that if a patent has been granted in country A, but the inventors did not file in country B, then the novelty test would be failed in country B by another applicant, since the patent in country A would make the invention not “new,” therefore failing the novelty test anywhere in the world.
- 28.
The number of patents by itself may not be a reliable indication of innovation as the number of unitary claims included in a patent may differ radically in countries like Japan, China, the United States, and Europe. For example, a US patent based on Japanese patents may combine five or more claims that are filed as separate patents in Japan.
- 29.
The handling of IP in China has become significantly more professional and internationally aligned in the last two decades. However, there are also signs that companies are becoming more careful in filing patents, due to potential expropriation and infringement issues and the number of filed patents should not, by itself, be used as a measure of national innovativeness. There are indications that US companies are increasingly opting to protect their technologies through trade secrets, instead of patents which require full disclosure of technical details.
- 30.
Various empirical studies have shown a positive correlation between innovation as measured by patenting activity and GDP growth (Ulku 2004).
- 31.
Tesla recently “open sourced” all its patents in electric vehicle design with the hopes that it may stimulate the emergence of an innovative electric car ecosystem.
- 32.
- 33.
The role of competition in driving technological progress is discussed in Chap. 10.
- 34.
Tesla is an exception in the automotive industry at 11.7% R&D intensity, while among the traditional automotive OEM’s, Mercedes Benz (see Chap. 6) is the leader at 8.5% R&D intensity. Source: Statista.com
- 35.
In the United States, patents can only be listed as an asset on the balance sheet if they were acquired, as in purchased through a merger or acquisition. In that case a market price for the IP was established as part of the transaction. Firms are not allowed to estimate a capital value for the patents they self-generate, since this could be a potential way to artificially inflate the balance sheet. The accounting rules for valuation of IP differ by jurisdiction.
- 36.
Companies should keep in mind that there is a cost to secrecy, including having all their employees sign NDAs, maintaining vaults and securing databases and networks, monitoring for IP leaks, and hiring lawyers to maintain legal pressure, as necessary. Technologies that are subject to classification due to defense or intelligence applications are the subject of Chap. 20.
- 37.
Source: https://en.wikipedia.org/wiki/Coca-Cola To this day and for over 100 years the Coca-Cola company has been able to maintain the trade secret for the original recipe for Coca-Cola, and this despite having twice been ordered by a court to reveal it. This trade secret is a major asset and also a source of reputation for the company, see Allen (2015).
- 38.
Typical sources of patent data include USPTO, WIPO, The Lens, Google Patents, etc.
- 39.
- 40.
Source: http://tlo.mit.edu/, URL accessed July 27, 2020
- 41.
As discussed in Chap. 8, technology roadmaps should contain a summary of the IP landscape
- 42.
Intel is a good example of an international firm with a clearly established IP position
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de Weck, O.L. (2022). Patents and Intellectual Property. In: Technology Roadmapping and Development . Springer, Cham. https://doi.org/10.1007/978-3-030-88346-1_5
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