Nadya Reingand, PhD

Yan Hankin, Esq.

Washington DC, USA

© Copyright. All rights reserved.

Intellectual Property and Business Aspects of Digital Holography

Patent Hatchery LLC

http://us-patent.ru

July 14-17, 2014, Seattle, USA

Patent Hatchery Company

Intellectual Property Protection

Registered IP (most common)

PatentsTrademarksCopyrights

Other types of IPTrade secrets

IP rights give the owner a right to exclude others from making, using, offering for sale or selling the

invention

Utility patentsDesign patents

Invention: from idea to business success

patent licensing

acquisition

Company revenue

Role of patenting

patenting

Two options:Licensing IP via Office of Technology TransferCreating a start-up and starting business yourself

In both cases patenting is a key element of achieving revenue

“Up to 75% of the company value is in its intellectual

property”

Early publicationT. S. Huang, "Digital Holography," Proc. IEEE

59(9), 1335-1346 (1971) {Leonid Yaroslavsky, in his book, "Introduction to Digital Holography“}

Scanned hologram

Optical reconstruction

Computer reconstruction

You searched for: ((digital) AND holography)

IEEE Explorer 751Google Scholar 54,300

Digital Holography @ Google Scholar

Early days: 1968 patent on digital recording and the reconstruction of optical waves

U.S. Patent No. 3,606,515, invented by Hirsch et al. originally assigned to IBM Corporation

Continuity data

In the patent:

National application– PCT- US patent

Assignee #1 Daewoo Electronics

Assignees: 2 - 20

Patenting in digital holography: continents

Patent protection is territorial

If you file patent application in one country, It is NOT protected in other countries Nobody in other country can get a patent for the invention which copies your

patented in your country invention

BUT Anyone can produce and sell your invention in other country, for example, for US

patented product it is legal to manufacture it in China, sell in Germany

IF THE INVENTION NEEDS TO BE PROTECTED WORLDWIDE, IT HAS TO BE FILED IN ALL COUNTRIES OF INTEREST

International patent application

serves to coordinate efforts on filing,

searching and the examination

of patent applications does not grant international patents.

142 countries are in PCT

After the PCT examination:• inventors can see the examination report, and • make a conscious decision on filing or not filing patents in a number of countries • the patent rights are granted by national offices

Entering national stage

PCT (Patent Cooperation Treaty) is an agreement for international cooperation in the

field of patents

Patenting in digital holography: countries

Largest owners of patents in the "microscopy" category of digital holography

21

World intellectual property organization

• is a specialized agency of the United Nations• dedicated to developing a balanced international intellectual property (IP) system

Remember that WO patent documents are

patent applications

Patents: WIPO PCT Publications

start with letters WO

Once again about timing and sequences

Generally:

Sometimes:

Almost never

National patent filing

PCT patent filing

National patent filing

Other country patent filing

PCT patent filing

National patent filing

Other country patent filing

National patent filing

National patent filing

Patent filing in foreign countries Working with licensed practitioner in each country Paying annuity fees ($100-$500) in each country Some countries have PPH program with USA In some countries – IP rights enforcement is problematic

Patents of different countries

U.S.Patent Office encourages PPH patent filings

Patent Prosecution Highway Program: Allowed in the foreign country -> allowed in USA

Allowance of PPH

application is much

higher

Intellectual Property ownership

IP ownership

1. Typically the employer owns IP ; Employee agreement IP assignment

2. Joint ownership of the intellectual property joint ownership means that each owner has independent right to exploit

the intellectual property

If IP is owned by two companies, can one of them sell IP without asking permission of the other side?

Yes, both own 100%

Nathan Myhrvold formerly Chief Technology Officer at Microsoft, is co-founder of IV

Patents as assets

ConclusionsPatents:TrademarksCopyrightPrior art search (next)

Thank you for your attention

admin@us-patent.info