Center of Entrepreneurship & Technology at UC Berkeley
Instructors: Dr. Tal Lavian
Time: Mondays 4:00-6:00 pm
Location: 321 Haviland
GSI : None
Contacts: tlavian@cs.berkeley.edu
Grading: P/F or letter grade
Credit: 1-4 units
Control # 41054
Announcement: I will be away teaching a class at Tsinghua University in Beijing, via UC Berkeley CET, and not be able to attend class on two Mondays, March 29th and April 5th. Those classes will be rescheduled to a time that will bechosen by the students enrolled.
Overview:
In the current age of information, innovation has become the key to economic growth. In budding and rapidly growing industries, intellectual property (IP) can be the difference between survival and failure.
Inventors and entrepreneurs have four concerns related to patent law: protecting their inventions in the very early stages of product development; determining the patentability of their invention; avoiding infringement of a competitor's patent; and leveraging their patent as a business asset. This course will address each of these concerns through the application and analysis of engineering and business cases to an invention of the student’s choice.
The course broadly covers patents as a business tool and the use of intellectual capital for competitive advantage. It provides students with the knowledge necessary to understand intellectual property from the engineering and business perspectives, and it discusses how to protect and commercialize intellectual assets. The course examines several patent litigation case studies from engineering, legal, and business perspectives. Technical analysis of these cases will be carried out to develop skills to quickly ascertain the protected technical content of patents, and to recognize what intellectual property can and should be protected.
Class Grading and Attendance:
Students will be graded on their participation during the course, including individual class presentations. Each student will present to the class an intellectual property case of his/her choice (about 15 minutes). The students will also prepare short silly patent presentations. Attendance at the lecture sessions is required for a passing grade. Students will be expected to sign in for each class, as well as to submit a question during the Q&A portion of the lecture that is relevant to the session discussion topic. Student signatures will be matched to validate individual attendance. Absences for truly critical and unavoidable reasons should be arranged in advance whenever possible. One missed lecture is allowed. Students should plan to arrive 10-15 min prior to the beginning of each lecture to sign in for the class. Late students will be not be allowed to sign in, and will be considered absent. A failing grade will be assigned to any student with two or more absences.
Topics:
Introduction to IP and Overview of the Patent System
- Comparison of the types of Intellectual Property
- Kinds of Patent Protection and the Patent Process
- Sections of a Utility Patent and the Subject Matter and Usefulness Requirement
Inventorship and Ownership
- Inventorship Rules
- Ownership, Assignment, and Licensing of Patent Rights
Building a Patent Portfolio
- Publication, Public Use, and On-Sale Limitations
- Enablement and Best Mode Requirements plus how to File your own Provisional Patent Application
- Novelty and Obviousness Requirements plus how to Conduct a Patentability Analysis
Avoiding Patent Infringement
- Defenses and Remedies plus how to Design around Problematic Patents
Leveraging a Patent
- Patentability and Infringement Comparison
- Capturing and Evaluating Inventions
Patent Litigation
- Basics of a Patent Infringement Lawsuit
- Strategies for Engineers who are Witnesses or Experts in Patent Lawsuits
Books:
Required
1. Fundamentals of Patenting and Licensing for Scientists and Engineers
Optional
1. From Ideas to Assets: Investing Wisely in Intellectual Property
2. Patent Law for Scientists and Engineers
3. Einstein in the Boardroom: Moving Beyond Intellectual Capital to I-Stuff
4. Closing the Innovation Gap: Reigniting the Spark of Creativity in a Global Economy
5. Rembrandts in the Attic: Unlocking the Hidden Value of Patents
6. Open Innovation: The New Imperative for Creating and Profiting from Technology
7. Making Innovation Work: How to Manage It, Measure It, and Profit from It
8. The Innovation Algorithm:TRIZ, systematic innovation and technical creativity
9. The Patent Wars: The Battle to Own the World's Technology
About the Instructor:
Dr. Tal Lavian brings 20+ years of innovation in the high tech industry. He holds a Ph.D. from UC Berkeley in Computer Science specializing in networking and communications. Dr. Lavian created a bridge between academic and industrial research to provide tangible value in advanced technologies. Among many previous appointments he has held, Dr. Lavian served as a Principal Investigator for DARPA and a visiting scientist at UC Berkeley’s RAD Lab, where he participated in both the SAHARA and ICEBERG research projects. He also served as Technical Chair of the Patent Committee for Nortel’s Enterprise Data Business Unit. Dr. Lavian was the key advisor for hundreds of invention ideas: more than 40 patents issued and published. As founder of Innovations-IP, Dr. Lavian provides expert consultation in patent litigation cases. His areas of expertise are networking, communication, grid computing, software, and systems. Dr. Lavian co-authored over 25 scientific publications, journal articles, and peer-review papers.