Fundamentals of Patenting and Licensing for Scientists and Engineers

Citation

(2011), "Fundamentals of Patenting and Licensing for Scientists and Engineers", Assembly Automation, Vol. 31 No. 2. https://doi.org/10.1108/aa.2011.03331bae.001

Fundamentals of Patenting and Licensing for Scientists and Engineers

Article Type: Book review From: Assembly Automation, Volume 31, Issue 2

Matthew Y. MaWorld ScientificMarch 2009292 pp.$68.00978-981-283-420-1www.worldscibooks.com/business/6993.html

The book Fundamentals of Patenting and Licensing for Scientists and Engineers by Matthew Y. Ma, despite some probably unavoidable deficiencies, certainly achieves its primary goal. Its technology-focused readers will better understand the worlds of the patent and business professionals with whom they must cooperate.

It is not the author's fault that patent laws and licensing practices keep changing at almost unbelievable rates. Dr Ma understands that only by offering concrete examples and details can he get across the "flavors" of patent prosecution and of patent monetization, of adding maximum business values to the inventive process. Understanding this, Dr Ma's scientist/engineer readers can, by ingesting such examples and details, come to more sophisticated understandings, for example, from company "bottom-line" viewpoints, of the processes of invention management. And these business/legal ways of thinking are most often strange and foreign to the inventors (who already have the most sophisticated technical understandings).

The book itself is a four-part structure:

The first part gives perspective by presenting the broad basics and legal backgrounds relating to patents, enough to assist making the next parts of the book digestible. As a primer about the relations between inventions and patent law, this part performs its duties in a more than acceptable manner.

The second and third parts take the reader through the maze of the patenting process, almost an impossible lesson to "brief". Dr Ma performs heroic efforts to explain (second part) the mysteries of properly preparing a patent application and the "claiming" process and the relationship to the patentability searching process. Then, because the duties of the inventor continue to be valuable during the prosecution process with the Patent Office, this book explains (third part) each of the many twists and turns encountered in trying to get the most valuable patent possible issued as an official patent. But it should be understood that many of the details of "best" application preparation and prosecution keep changing, and that Dr Ma is going after a "fundamental" appreciation of the process and its relation to the fourth part of the book.

The fourth and last part of the book is a special contribution to the patent literature – a teaching from an inventor-type person to inventor-type learners about money issues. Dr Ma, with his technical perspectives, does not shrink from grappling with the business issues of patent budgeting, patent valuation (with details of some approaches to valuation), patent enforcement costs, patent licensing choices, etc. Those engineers who stay with Dr Ma through this fourth part, even though most of their duties may be technical, will enhance their career values by being more knowledgeable players along the two-way street from invention through patenting through monetization.

As a patent attorney who has spent much of his life trying to empower technical people to partake more fully of the entire patent system, I commend Dr Ma's efforts.

Marty Stoneman Registered Patent Attorney, Stoneman Volk Patent