Center of Entrepreneurship & Technology at UC Berkeley
Instructors: Dr. Tal Lavian
Time: Mondays 4:00-6:00 pm
Location: 225A Bechtel
GSI : Manoj Warrier
Contacts: tlavian@cs.berkeley.edu
Grading: P/F or letter grade
Credit: 2-3 units
Control # 41071
Overview:
In the age of information, ideas and innovation are becoming the principal drivers of economic growth. In nascent and rapidly growing industries, intellectual property can be the difference between survival and failure. 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 (IP) can and should be protected.
Goals:
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 of engineering and business cases to an invention of the student’s choice. Alternatively, up to six students may choose to participate as “expert witnesses” in conjunction with a patent litigation course being offered at UC Berkeley School of Law. These students will become “expert witnesses” in the technology involved in actual patent infringement actions currently pending in federal court and will consult with law students in mock litigation, which will include depositions and “court” hearings. Additional course credit (3 units) will be available for these students.
Grading:
Students will be graded on their participation during the course and on individual class presentations. Each student will present to the class a case of his/her choice (about 15 minutes)
Invited Lectures:
- Ted Sichelman,
- Duane Valz, VP & Associate General Counsel for Global Patent Strategy at Yahoo!
- Mr. Joe Beyer, VP Licensing at HP
- Professor Randy Katz, UC Berkeley EECS
- Professor Lawrence J. Udell, California Invention Center
- Ron Laurie, Managing Director - Inflexion Point
- Timothy Teter, Partner, Cooley, Godward, Kronish LLP
A few classes will likely be held in conjunction with the Patent Litigation: Claim Construction & Discovery course at UC Berkeley Law School.
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 Unobvious ness 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
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 & Networking with minor in Patent Law. Dr. Lavian created a bridge between academic and industrial research to provide tangible value in advanced technologies. He served as Technical Chair of the Patent Committee for Nortel’s Enterprise Data Business Unit. Key advisor for hundreds of invention ideas: conceived over 60 invention disclosures, 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.