Introduction

• Author: Steven H. Voldman
• Profession: Is an IEEE Fellow and graduate of Massachusetts Institute of Technology (MIT)
• Pages: 1-35

From Invention to Patent: A Scientist and Engineer’s Guide. First Edition. Steven H. Voldman.

© 2018 John Wiley & Sons Ltd. Published 2018 by John Wiley & Sons Ltd.

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1.1 Introduction

Intellectual property (IP) is a key goal of corporations across the entire world to achieve

success. Inventions and patents are part of the path to build and innovative corporation

in today’s world. This shared goal is not of just interest in the United States and Europe

but is a goal across South America, Asia, the Middle East , to Africa. With this increased

interest, there are more intellectual property organizations [1–7], books [8–17, 23–27],

search engines [18, 19], and patent short courses [20–22].

In 2006, I was requested by an IBM management team to build a two‐hour lecture on

how to invent [20, 21]. A manager adjacent to my office noted that my productivity in the

invention submission process exceeded his sixty‐man team of software developers for

supply‐chain software. I provided a two‐hour lecture to his team on how to invent and

how to become an inventor. We set corporate goals for the team. The manager asked what

the goal should be for his team. I kept it simple. I said you have 60 employees, and 52 weeks

per year; I said one invention submission a week, which is approximately one submission

per employee per year. Prior to establishing this goal, there were three submissions for the

entire team; after establishing the goal, the team was submitting above the target.

In 2007, I was requested to build an invention course in Malaysia. It was stated that the

Malaysian government wanted to improve its IP portfolio. I built an all‐day invention

course with 80 attendees of the Ministry of Science and Technology (MOSTI) in the con-

vention center in Putrajaya, Kuala Lumpur, Malaysia [20, 21]. The course was expanded

into a two‐day course for I Pham, at Universiti Science Malaysia (USM) with attendees

from pharmaceuticals, university faculty, bio‐technologists, and chemists. This also

acquired interest in Colombo, Sri Lanka, where the course was brought the following year

to software developers. This was expanded into a second advanced course [22].

During that time, there were many attendees who requested a text be written based

on the course. And, here it is!

1.1.1 Intellectual Property

What is intellectual property?

Formally, intellectual property is creations of the mind. A creation of the mind is crea-

tive works or ideas embodied in a form that can be shared or can enable others to

Introduction

From Invention to Patent: A Scientist and Engineer’s Guide2

re‐create, emulate, or manufacture them. There are four ways to protect intellectual

properties (Figure1.1) [1]:

● Patents

● Trademarks

● Copyrights

● Trade secrets.

1.2 Patent

In this section, patents will be discussed, addressing what a patent is and why you should

patent your innovations, ideas, and inventions.

1.2.1 What Is aPatent?

What is a patent?

A patent is a property right granted by a government to an inventor “to exclude others

from making, using, offering for sale, selling or importing” the invention.

The U.S. definition is “ A patent is a property right granted by the Government of the

United States of America to an inventor “to exclude others from making, using, offering

for sale, or selling the invention throughout the United States or importing the inven-

tion into the United States” for a limited time in exchange for public disclosure of the

invention when the patent is granted [1].

1.2.2 Patents andtheUS Constitution

The concept of providing protection for the inventors is contained within the U.S.

Constitution. The U.S. Constitution states the following [1]:

Congress shall have the power …. To promote the progress of science and useful art by

securing limited times to authors and inventors the exclusive right to their respective

writings and discoveries. (U.S. Constitution, Article 1, Section8, 1790).

Patents

Intellectual

property

Trade secrets

Copyrights

Trademarks

Figure 1.1 Intellectual property.

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The idea of protection of intellectual property is built into the U.S. Constitution for

patents, copyrights, trademarks, and trade secret s.

1.2.3 Why Patent?

A common question that people have is why they should patent an invention.

A patent is a means in which a government can protect your rights as a citizen to your

invention.

A patent is a means in which a government can protection your rights as a corpora-

tion to your invention as well [1].

The patent office is a way for the government to protect your creative works. In many

cases, an investment to develop or manufacturing your invention has occurred, and one

would like to recover the return on investments that occurred.

Patenting an invention protects you from other people or businesses to copy or dupli-

cate your idea. As a business, a business would like to protect its investment and protect

its employees as well.

By not patenting an invention, there is a risk that your idea is taken, copied, or repro-

duced for sale in your country. Corporations such as Coca‐Cola Corporation did not

patent the Coke syrup recipe but chose to keep it as a trade secret.

1.2.4 What Is Patentable?

What is patentable?

A common question that people ask is whether their invention is patentable. There are

different categories of patents of ideas or inventions that are patentable (Figure1.2) [1]:

● Utility patents

● Design patents

● Plant patents.

Utility patents: A utility patent is a patent that “protects useful processes, machines,

articles of manufacture, and composition of matter [1].”

Design patents: A design patent is a “patent that protects new, original, or ornamental

designs for articles of manufacture [1].”

Plant patents: A plant patent is a “patent that protects invented or discovered asexu-

ally reproduced plant varieties [1].”

Patents

DesignUtilit

yP

lants

Figure 1.2 Patents.