SCHOOL OF FOOD TECHNOLOGY, NUTRITION

AND BIO ENGINEERING

NAME: KWAGALA JOSHUA
REG NO: 21/U/08907/PS
COURSE: PRODUCT AND PROCESS
DEVELOPMENT
A PRESENTATION ABOUT PATENT AND
INTELLECTUAL PROPERTY
PATENTS AND INTELLECTUAL
PROPERTY
Intellectual property: This refers to the legally
protectable ideas, concepts, names, designs, and
processes associated with a new product
What is intellectual property?

Four types of intellectual property are relevant to

product design and development.
A particular invention usually falls into one of these
categories.
Patent: A patent is a temporary monopoly granted by a
government to an inventor to exclude others from
using an invention
What is intellectual property?
Trademark: A trademark is an exclusive right granted
by a government to a trademark owner to use a
specific name or symbol in association with a class of
products or services

Trade secret: A trade secret is information used in

a trade or business that offers its owner a
competitive advantage and that can be kept secret
 What is intellectual property?
Copyright: A copyright is an exclusive right granted by
a government to copy and distribute an original work
of expression, whether literature, graphics, music, art,
and tertainment, or software.
Intellectual property

patents
Trade
marks

Utility Design Plant Copyright Trade

patents patents patents secret
What is intellectual property?
Overview of Patent
For most engineered goods, two basic types of patents are
relevant: design patents and utility patents
.
Utility Patent: one that covers the creation of a new or
improved and useful product, process or machine.

Design patent: one that provides the legal right to

exclude someone from producing and selling a product
with the identical ornamental design described by the
design patent
Utility patents
For Utility patents, the law requires that patented
innovations should be:
Useful:
 The patented invention must be useful to someone in some
context
Novel:
 Novel inventions are those that are not known publicly and
therefore are not evident in existing products, publications, or
prior patents
Nonobvious:
 Patent law defines obvious inventions as those that would be
clearly evident to those with “ordinary skill in the art” who
faced the same problem as the inventor
Preparing a disclosure
This chapter is focused on a process for preparing an
invention disclosure—in essence a detailed description of
an invention
This is in the form of a patent application,
 It can serve as a provisional patent application and with relatively
little additional work

Below are the steps taken to prepare a disclosure

Step 1: Formulate
In formulating a strategy and a plan
a patent strategy and plan, a product
development team must decide on the timing of the
filing of a patent application, the type of application to
be filed, and the scope of the application.

Timing of Patent Application.

The inventor usually benefits by delaying the
application until just before such disclosure. The
advantage to waiting as long as possible is that the
inventor has as much knowledge as possible about the
invention and its commercialization.
Step 1: Formulate a strategy and a plan
 Types of Applications
Provisonal patent application: Are applicatios that needs
only to fully describe the invention.
(They are not reviewed by the examiner)
Regular patent applications: These are applications that
are reviewed by the examiner/patent office.
Step 1: Formulate a strategy and a plan
 Scope of Application
The team should evaluate the overall product design and
decide which elements embody inventions that are likely
to be patentable
While defining the scope of the patent, the team should
also consider who the inventors are.
An inventor is a person who contributed substantially to
the creation of the invention.
Step 2: Study Prior Inventions
Key reasons for studying prior invesions.
There are three key reasons for studying prior inventions,
the so-called prior art. They include:
i. Design teams can learn whether an invention may infringe on
existing unexpired patents
ii. The inventors get a sense of how similar their invention is to
prior inventions and therefore how likely they are to be
granted a broad patent
Step 2: Study Prior Inventions
Key reasons for studying prior invesions.
 iii. The team will develop background knowledge enabling the
members to craft novel claims.
Step 2: Study Prior Inventions
In the course of product development efforts, most teams
accumulate a variety of references to prior invesions.
. Some of the sources of information on prior inventions
include:
 Existing and historical product literature.
 Patent searches
 Technical and trade publications
Step 3: outline claims
Issuance of a patent gives the owner a legal right to
exclude others from infringing on the invention
specifically described in the patent’s claims.
Claims describe certain characteristics of the invention.
They are written in formal legal language and must
adhere to some rules of composition
Step 3: outline claims
At this point in the process of preparing the disclosure,
the team benefits from thinking carefully about what it
believes is unique about the invention.
This is why outlining of the claims is recommended by
the team
Step 3: outline claims
Example.
 an outline of the claims for the Coffin invention
might be:
Use of corrugations as insulation, in many possible
forms
 Corrugations on the inside surface of the tube
 Corrugations on the outside surface of the tub

Recyclable materials
Recyclable adhesive
 Recyclable sheeting
STEP 4: Write the Description of the
invention
 The description must present the invention in enough
detail that someone with “ordinary skill in the art”
could implement the invention.

 It should also be a marketing document

 promoting the value of the invention and the weaknesses in
existing solutions
STEP 4: Write the Description of the
invention
A typical description includes the following elements:
Title:
 Provide a short descriptive label for the invention
List of inventors: All inventors must be listed
 A person should be listed as an inventor if he or she originated
any of the inventions claimed in the application.
Field of the invention:
 Explain what type of device, product, machine, or method this
invention relates to.
STEP 4: Write the Description of the
invention
Background of the invention: State the problem that
the invention solves
Summary of the invention:
 This section should present the substance of the invention in
summarized form
Brief description of the drawings
 List the figures in the description along with a brief
description of each drawing
Detailed description of the invention:
 contains detailed descriptions of embodiments of the invention
along with an explanation of how these embodiments work
STEP 4: Write the Description of the
invention
Figures
For an invention disclosure or provisional patent
application, informal figures are sufficient and hand
sketches or CAD drawings are perfectly appropriate
The features shown in the figures may be labeled with
words
The team may also wish to use “reference numerals”
on the figures.
STEP 4: Write the Description of the
invention
Writing the Detailed Description
The detailed description describes embodiments of
the invention
A good strategy for writing the detailed description is
 first create the figures that show embodiments of the
invention
 first create the figures that show embodiments of the

invention
 Finally, explain how the embodiment works and why the

features are important to this function

STEP 4: Write the Description of the
invention
Defensive Disclosure
The primary benefit of a patent is that it grants the
owner offensive rights.
That is, the owner has the right to prevent others from
practicing the invention
This defensive strategy may offer competitive advantages
in fields of emerging technologies
Step 5: Refine claims
The claims are a set of numbered phrases that
precisely define the essential elements of the
invention.
Although claims must be expressed verbally, they
adhere to a strict mathematical logic. Almost all
claims are formulated as a recursive expression.
Guidelines for Crafting Claims
 Always try to make a claim as general as possible
 Avoid absolute definitions by using modifiers like
“substantially,” “essentially,” and “approximately.”
Step 5: Refine claims
Attempt to create an invention that does not infringe on the
draft claim, and then try to rewrite the claim or add an
additional claim such that the hypothetical invention would
infringe
Step 6: Pursue Application
In most cases, the inventor will deliver the draft
application to a patent attorney or other intellectual
property professional for refinement and formal
application
It is possible to file a patent application as an individual if
severely budget constrained
Once an invention disclosure is prepared, the team can
proceed in different ways,
Step 6: Pursue Application
Once an invention disclosure is prepared, the team can
proceed in different ways i.e,
 The team can file a provisional patent application
 An individual or small company can file a provisional patent
application for less than $100 in filing fees.
 The team may file a patent cooperation treaty or PCT
application
 A PCT application allows a single patent application in a
single country to initiate the process of pursuing international
patent protection
Step 7: Reflect on the Results and the
Process
In reflecting on the patent application or invention
disclosure, the team should consider at least the following
questions
What are the essential and distinctive features of the product
concept, and therefore the invention?
What is the timing of future required actions?
Which aspects of the process of preparing the patent
application or invention disclosure went went smoothly
and which aspects require further efforts in the future?
Step 7: Reflect on the Results and the
Process
Did the team begin the process too early or too late? Was
the effort rushed? What is the ideal timing for the next effort
to prepare a patent application?
How strong an intellectual property position does the team
have?
summary
A patent is a temporary monopoly granted by a
government to exclude others from using, making, or
selling an invention
An invention can be patented if it is useful, novel, and
nonobvious.
The final invention that is patented is defined by the patent
claims.
We recommend a seven-step process for pursuing a patent
Formulate a strategy and plan, Study prior inventions, Outline
claims, Write the description of the invention, Refine claims,
Pursue application, Reflect on the results and the process
respectively.
References
Sorensen, Jay, Cup Holder, United States Patent
5,425,497, June 20, 1995.
eleventh edition, Nolo Press, Berkeley, CA, 2010.
www.ulrich-eppinger.net
Coffin, David W., Recyclable Corrugated Beverage
Container and Holder, United States Patent 5,205,473,
April 27, 1993.
www.epthinktank.eu
Fifth Edition Product Design and Development by
Karl t. Ulrich, Steven D. Eppinger