Syllabus TCOM DL (Spring 2017)

Transcription

1 Syllabus TCOM DL (Spring 2017) Course: TCOM 590 Intellectual Property and Select Legal Topics for Technology Professionals (3 CR) Prerequisite: Graduate Standing in TCOM program Time: Wednesday 7:20-10 pm Text: Patent Strategy for Researchers and Research Managers (H. Jackson Knight, Second edition, ISBN ) Instructor: Kamran Emdadi (Registered Patent Attorney) (allow 24 hours for an answer to your question) Telephone: (W/H/C) (please try ing first) Office hours: TBA Course Description This course will be composed of 2/3 patent law strategy and 1/3 general law related strategies for a professional working in the technology sector. The main part of the course (2/3 of the course) will focus on how to manage the legal process of filing a patent, obtaining a patent, licensing a patent and handling other forms of intellectual property. In addition, the student will be advised on how to handle the legal process and work with an attorney to maximize the overall legal process from a corporate professional s perspective. Certain skills developed will be: understanding the right form of intellectual property suited to the company s current needs, how to hire and manage an attorney, and, how to manage the corporation s interests while working with the attorney. The student will practice exercises in searching for prior art patents via public databases, comparing those references to their company s inventions, determining whether to file a patent, preparing the company to hire and pay a patent attorney, creating agreements and other paperwork for the company s inventors, and training the inventors on how to prepare the disclosure. The student will also learn to read portions of a patent, determine what is being invented, determine potential infringers, and the basics of patent litigation. For the remainder of the course (1/3 of the course), the student will learn general tort liability and a company s exposure to being sued and how to safeguard itself against unnecessary liability. Such liability includes tort liability, product liability, and strict liability. Other topics will include contract law, partnership, corporate law and formation, and securities law. These legal topics will be covered by slides and handouts only. Course Goals/Objectives It is expected that successful students in this course will be capable of: 1. Becoming a patent strategist that guides, suggests, and leads efforts to obtain patents for a technology corporation. 1

2 2. Searching for prior art and reporting the playing-field in a particular technological area from a patent perspective. 3. Understanding high-level legal concerns and communicating those concerns properly to an attorney that is hired to enforce those concerns. 4. Being the legal liaison on legal issues that arise in a small to medium-sized technology corporation (pseudo in-house attorney). 5. Selecting a corporate formation and necessary steps to ensure proper corporate legal strategy for a growing company. Course Materials Textbook Patent Strategy for Researchers and Research Managers H. Jackson Knight. Course Format This course will operate as a face-to-face class. Certain materials will be available online and may be downloaded and printed by the student prior to attending class. Office hours will be held (TBA) and the professor may be contacted via anytime, or, via telephone during designated discussion times. Grading Final Exam 35% Midterm 25% Assignments/Homework 30% Class Participation 10% (measured by attendance, raising your hand (messaging online) and offering input to the discussions, answering questions when called on for a response, arriving on time, staying the entire class period). Assignments The actual assignments will be based on reading, participation, writing and research. Schedule No class one time TBA. All other classes are scheduled to take place. See below for schedule guide. 2

3 Policies Students are expected to turn in assignments on time at the beginning of class. I recommend stapling your assignment. No assignments will be accepted after 14 days from the due date, assignments late even one day will lose credit However, if you do not complete an assignment at all then that is worse than turning it in late from a grading perspective. Students are expected to show up to exams on exam dates ALL EXAMS ARE CONDUCTED ONLINE. Students are expected to attend class regularly. All students are required to have extenuating circumstances for violating any of the above policies, all instances of extenuating circumstances are to be brought to my attention immediately. Students with disabilities It is your responsibility to register and contact the office of disabilities here at GMU Fairfax. Week 1 Patent Fundamentals Homework - Read Chapter 1 Assignment #1 Tesla patent write-up What is a patent? What are the four types of intellectual property? o Trademark o Copyright o Trade Secret o Patent How do you know when you need a patent? What do you do? - Contents of a patent (distribute a patent to the class) Discuss the sections of the patent. Discuss a patent vs. a publication, why different. Explain the claims section of the patent briefly. Brief patent presentation. Week 2 Patent Anatomy Homework - Read Chapter 2 Assignment #2 Patent search assignment and report Pass out examples of various patents. Discuss each section. Begin claim dissection and analysis. Discuss different types of claims. Week 3 - Patent Searching Homework - Read Chapter 5 3

4 Assignment #3 -TBA Black box vs. system claims, method claims vs. apparatus claims. Have class draw pictures of the claims, pop quiz (ungraded). Reverse engineer a diagram (have class write-up a claim based on diagram). Explain relevance of claims, and how the patent manager needs to be able to discuss claims with inventors and the attorney. Introduction to patent searching o Google searching works well. o Public search room at the USPTO. o Exercises homework to establish a particular field of technology (preferably telecommunications) that needs be researched for your company. 1. Assignment those of you who are working in the telecommunications field, go see your director or VP to tell them you are going to do a free patent search for a particular technology. This could boost your career as I guide you through this process. 2. Get all the information related to the project you are researching. 3. Narrow down the fundamental technology and words or acronyms that are the focus of the technology and the specific improvement. 4. do a patent search on google, find the invention that best fits, print out the patent and bring it to class. 5. write a paragraph describing the background and actual invention and why it is similar or different from the technology you are searching for. Week 4 - Patent Portfolio (Sprint example) Homework - Read Chapter 3 Emerging technologies: o Drones o Cloud o BLOCKCHAIN Week 5 - Patent Litigation Read Chapter 8 A patent holder sues a product maker Portfolios hold up better Invalidity presumption of validity Week 6 Patent Success Stories and reinforcement discussion and claim construction Read Handout Claim construction generally: Claims should be construed as of the time of the invention. Limitations should be given their ordinary meaning as understood by a skilled artisan. Claim differentiation applies to presume a difference in meaning and scope when different words or phrases are used in separate claims. 4

5 Preamble terms are not claim limitations. Limitations in the specification may not be read into the claims. Express limitations in the specification should be read into the claims. Claims should be construed to cover preferred embodiments. Claims should be construed to uphold their validity. Week 7 - Patent Portfolio Strategy continuation strategy, standards inventing, etc. Read my paper on the success story of Telogy Networks. Ten Suggestions to Ensure Powerful an Enforceable Patent Portfolio [(P 10 ) Strategy] 1) File patents early in the product development life cycle to beat out competitors. 2) File patents continually throughout the product development life cycle and into the future to ensure all angles are covered by patent protection. 3) Prepare company resources for a large growth in the IP strategy. 4) File patents as an offensive business strategy. 5) File patents as a defensive business strategy. 6) Get your patent assignments in order, executed and filed. 7) File continuation applications on particular patents in a broad portfolio to create a narrow patent portfolio depending on the interests of the customer and marketability. 8) Consider acquiring smaller companies that are working on comparable technologies, or, at least partnering with their inventors to increase the portfolio strength. 9) Create a portfolio of multiple patents for every important product and/or development effort. 10) Teach your inventors about patents and how they work to ensure helpful interaction with patent attorneys and successful patent strategies. Week 8 - Recent trends in patent law No Reading Identifying fields of patent interest o (Searching publications by assignee/technology trend spotting). Discuss In re Bilski (an important recent patent law related case for computer program, business method and method-type claims). Guest speaker (Keith Mullervy co-associate frequent paper writer and publication holder). Week 9 Managing In-house Concerns Read Chapters 6-8 Non-disclosure Agreements for inventors. Invention Disclosures o Format 5

6 o Lessons for Inventors o Importance Week 10 Other Patent Strategies No Reading Biotechnology Patents o Drug patents o Billion dollar patents Telecommunications -Standards patenting o 3GPP o IEEE o How to track standards, setup a team of standard auditors, and invent on the fly to cover a standard likely to be ratified. Nanotechnology Chemistry Week 11 Contracts (SLIDES ONLY) Read handout case law and statutes Offer Acceptance Breach UCC - merchants Material Terms Types of Contracts Business Contracts Patent Licensing Week 12 General Liability and Product Liability (SLIDES ONLY) Read handout case law and statutes Negligence o Duty o Breach of Duty o Damages o Proximate Cause Strict Liability Products Liability Defamation o Libel o Slander Week 13 Partnerships and Corporation Fundamentals (SLIDES ONLY) Read Handout 6

7 Selecting a Form of Company Why form a company? Types of companies o Corporations o LLCs o Partnerships o Sole Proprietorships Financial rights of each type of company Liability to outsiders of each type of company Tax Implications of Organizational Choice Forming a Corporation Process for incorporation o How to incorporate o Articles of Incorporation o Where to incorporate o Incorporators o Filing Process Organizational Meeting Governing Documentation/Duration Financial Rights in Corporations 3 Types of Corporate Financing o Equity financing o Debt financing o Corporate earnings Equity Securities Debt Securities Week 14 TAX and Antitrust law (SLIDES ONLY) Read Handout Income? Rules and regulations of the FTC and DOJ. Week 15 - EXAM Sample Course Projects Claim Drafting and Drawing Exercise A drawing of a new invention will be provided and a detailed claim must be provided to capture the invention. Also, a claim will be provided and a detailed drawing must be provided to illustrate the claim limitations. Patent Search and Report Project 7

8 Students must research their own pre-approved technology patents and determine what the current market is in that particular technology. This includes claim analysis on patents, company analysis on the patent holder corporations, European patents, and white paper analysis. A detailed report with conclusions and suggestions must be made to the VP of engineering for their own Pseudo corporation. Grade Distribution A % A B B B C C C D D D F below 60% Grading Standard A - Outstanding achievement reserved for only the best students, where the student's work is of truly superior quality and all major and minor learning outcomes have been achieved at the highest level. The student demonstrates not only a mastery of all learning outcomes, but also an excellence in the application of the course skills to one's professional and personal life. B - Commendable achievement where the student's work is performed with the quality expected of students and all major and most minor learning outcomes have been achieved. The student demonstrates a mastery of all leaning outcomes. C - Minimally acceptable achievement, where the major learning outcomes are just barely met. The student demonstrates a basic knowledge and comprehension of the course learning outcomes. Academic integrity Assignments and presentations must be your own work, in your own words. Using outside materials is generally acceptable as long as you clearly identify the source. The key point is to make clear which ideas and text were developed by you, and which came from others. False or fabricated information is unacceptable. The integrity of your reports and presentations should meet the highest standards, whether as a student, consultant, or manager. Singular and isolated lapses of ethics, integrity, or professionalism have had devastating consequences on careers. Academic dishonesty cheapens the value of your degree and undermines the quality of your education. The University's Code of Academic Integrity is designed to ensure that the principles of academic honesty and integrity are upheld. All students are expected to adhere to this Code. The University does not tolerate academic dishonesty. All acts of academic dishonesty will be dealt with in accordance with the provisions of this code. See academicintegrity.gmu.edu 8