Patents for Business

While on vacation last week, my reading list included a new book titled Patents for Business by M. Henry Heines.  Mr. Heines, a patent attorney with over thirty years of experience, does a very good job of making accessible and engaging what can be a very dry and soporific subject.

This book is aimed at managers who need to have basic awareness in the arena of intellectual property to make assessments and decisions related to due diligence and other day to day issues that arise.  The book succeeds very well and provides a broad survey of the key topics that these managers need including: patentability, prior art search, novelty and non-obviousness, claims analysis, and freedom to operate.  Mr. Heines gives many specific examples to help the reader absorb the fine points of the topics discussed.

While aimed at managers, Patents for Business is also a useful primer for the innovation practitioner.  Patents are very important for innovators as they both define the landscape in which we can operate and serve as a valuable source of ideas for problem solving.  The chapters on novelty and non-obviousness, freedom to operate, and claims analysis are particularly useful to the innovation practitioner.  While Mr. Heines stops short of discussing systematic approaches for creating freedom to operate in the face of an intellectual property roadblock, many of the basic principles are touched upon.

Comments

[Jim Belfiore]

Ironic, I think, is the timing of this book's publication, just prior to a recent Supreme Court decision (http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf) which loosened the standard for 'obviousness', and represents a significant shift in both the cost and the value of IP protection.

In light of this ruling, the predictability of an innovation will be a key consideration for any company or inventor weighing the benefits of pursuing a patent.

[James Todhunter]

Yes, the KSR vs Teleflex decision is going to get a lot of attention. I am reviewing the opinion myself this week in preparation for a review with Counsel. I will follow up if any interesting insights seem worth sharing.