Understanding Patents in Photonics

November 25th, 2019 CARLES PUENTE BALIARDA Chief Scientist, co-founder, Fractus S.A.
Professor, Barcelona-Tech (UPC)

To get ICFO researchers to understand the basics of the patent, to learn how to find, read and interpret patent documents and to get familiar with some basic patent writing techniques. Researchers will understand the value and role of patents in the technology ecosystem, will get familiar with the patent prosecution process and learn to manage patent information comfortably.

  • Day #1; 14:00-17:30 Session #1 - Understanding the Patent Business Ecosystem – A technology and patent based business model. IP business in telecoms/electronics: Apple and Samsung, Qualcomm, Rambus, Tessera, Nortel, Google. The Fractus case. The MP3 case: Fraunhoffer/Thomson. Examples of a patent based technology companies in Photonics (Rambus, Tessera). The essentials of the patent system: Why do patents exist? What is a patent? Patenting inventions vs. patenting products. The patent as a technical document. The patent as a legal document. Social impact of patenting. The patent as a negative right. Impact of patents in business dynamics.

    General requirements for patentability. Exclusions from patentability. Patents as a source of knowledge: patent searches.The patent system worldwide: national filings and rules, patent cooperation treaty. Data structure of a patent and patent application document. Inventors and Assignees. Filing, priority, publication and granting dates. Structure of a patent document. Example: a patent on an Erbium Doped Fiber Amplifier (EDFA). Patent specification and claims. Patent specification: background, summary of the invention, description of the preferred embodiments/best mode, list of figures, drawings and claims.

  • Day #2; 14:00-17:30 Session #2 - Scope of protection and patent infringement. Claim structure: limiting features and scope of protection. Claim features and novelty. Independent and dependent claims. Claim hierarchy and protection level graphs. The onion layer structure. Multidependency. Independent claims in the EPO and in the US. Structure of a claim: preamble, limiting features and the two-part form. Basic and special types of claims (Markush, means plus function, product by process,..). Limiting words: ‘comprising’, ‘including’ vs. ‘consisting of’. Support according to EPO and USPTO rules. Independent and dependent claims: scope and validity. Claims as the skeleton of a patent specification. Claim drafting session – Students will read a patent specification on an Photonics system (e.g. a compact disk system based on a laser diode) and prepare a set of independent and dependent claims. Three students will present simultaneously their claim proposals. The class will discuss the scope.

Registration required

ICFO+ Program, November 25 and 27, 2019, 14:00. ICFO’s Seminar Room